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IP Updates

Challenging Patent Validity in the USPTO: Webinar Series

March 21, 2012

IP Updates

Challenging Patent Validity in the USPTO: Webinar Series

March 21, 2012

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Challenging Patent Validity

Fish launches a new post-grant webinar series for 2013: Post-Grant for Practitioners

Fish & Richardson’s post-grant practice chairs are back with a new monthly series of webinars devoted to topics of interest in the emerging area of post-grant proceedings. Join them as they share their experiences, insights, and practice tips.

To learn more and visit the webinar series page, click here.

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2012 Webinar Series – Challenging Patent Validity in the USPTO: Strategic Considerations in View of the USPTO’s Proposed Rules

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. The USPTO recently circulated proposed rules governing these procedures. Join us for a six-part webinar series in which experienced Fish & Richardson attorneys and guest speakers explore the strategic implications of these rules in-depth.

 

  • Part 1: Inter Partes Review Part I (Pretrial): issues relating to the petition itself, including whether to file, when to file, and what to include in the petition; the patent owner’s response; and the order itself.
  • Part 2: Inter Partes Review Part II (Trial): proceedings before the PTAB after IPR has been ordered, including evidentiary issues and discovery tactics.
  • Part 3: Inter Partes Review Part III (Post-Trial): issues arising after the PTAB renders its decisions, including appeal and estoppel implications.
  • Part 4: Supplemental Examination Proceedings: when and how to use as an alternative to existing reexamination proceedings, and relevance under current standards of inequitable conduct.
  • Part 5: Derivation and Post-Grant Review Proceedings: comparing them to other proceedings, including litigation, for challenging patents.
  • Part 6: Putting It All Together–Which Tools Are Right for You?
  • Part 7: Challenging Patent Validity in the USPTO: Strategic Considerations in View of the USPTO’s Final Rules – Inter Partes Review: In this 7th webinar, Karl Renner and Dorothy Whelan walk through several hypotheticals, to help listeners understand how these apply to common situations.

 

 

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Monday, August 27, 2012
1:00 pm EDT

 

 

 

Challenging Patent Validity in the USPTO: Strategic Considerations in View of the USPTO’s Final Rules – Inter Partes Review – In this 7th webinar, Karl Renner and Dorothy Whelan walk through several hypotheticals, to help listeners understand how these apply to common situations.
Karl Renner, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice

Click here to listen to the audio
Click here to download the presentation

 

 

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Tuesday, May 8, 2012
1:00 pm EDT

 

Putting It All Together–Which Tools Are Right for You? – The sixth in a six-part series
Karl Renner, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice

Click here to listen to the audio
CLE Reference Materials
Click here to download the presentation

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. Other procedures include post-grant review (PGR) and supplemental examination.

Our five previous webinars explored these tools in view of the USPTO’s newly proposed rules. In this webinar, we will examine these tools in the context of a series of hypothetical situations, with the goal of enabling you to make informed strategic decisions on whether and when to invoke the choices that are made available under the AIA.

Fish & Richardson will apply for one hour of general CLE credit in most states.

 

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Tuesday, April 24, 2012
1:00 pm EDT

 

Post-Grant Review and Derivation Proceedings – The fifth in a six-part series
Irene Hudson, Principal

Click here to listen to the audio
Click here to download the presentation

The America Invents Act (AIA) establishes a number of new trial proceedings to be conducted by a new Patent Trial and Appeal Board in the USPTO. Previous webinars in this series have focused on the new inter partes review (IPR) proceeding. In this webinar, we will consider the other two inter partes proceedings established under the AIA – post-grant review (PGR) and derivation proceedings. We will cover differences between these proceedings and IPR, and explore tactical and strategic implications following there from.

Fish & Richardson will apply for one hour of general CLE credit in most states.

 

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Tuesday, April 17, 2012

Supplemental Examination – The fourth in a six-part series
Samuel S. Woodley, PhD, Principal
Irene Hudson, Principal

 

Click here to listen to the audio
Click here to download the presentation

The America Invents Act (AIA) creates a number of USPTO-based procedures for reviewing issued patents. Among these is the new Supplemental Examination procedure. The procedure allows a patent owner to request Supplemental Examination of its issued patent by the USPTO “to consider, reconsider or correct information believed to be relevant to the patent.” In return, the AIA mandates that “a patent may not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of that patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent.” Hence, the Supplemental Examination procedure offers patentees limited amnesty against accusations of inequitable conduct.

The USPTO recently circulated proposed rules governing Supplemental Examination. We will explore these rules and their impact on both the patent owner and challenger, including the following questions and topics:

 

 

  • Is Supplemental Examination right for you and your patent? When and why might Supplemental Examination be appropriate?

 

 

  • Items of information
    • What’s included? Publications? Transcripts? Declarations and affidavits? Summaries? Handling of confidential/protected materials?
    • Page limitations? The rules propose strict page limits for each item of information. When/how to request additional pages?
    • How many items of information to include? The rules propose strict limits.

 

 

  • Content of the request
    • Who may file, and when?
    • Issues of patentability
    • What to include? Claim construction? Claim charts? Explanation?

 

 

  • Handling by the PTO
    • Time limits
    • Scope of review
    • Actions by the PTO: Supplemental Examination certificate or order reexamination

 

 

  • Deciding to institute Supplemental Examination
    • Relevance post – Therasense
    • Negative consequences

 

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Tuesday, April 10, 2012 – The third in a six-part series

Inter Partes Review Part III: Post-Trial
John Phillips, Principal
Karl Renner, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice

 

Click here to listen to the audio
Click here to download the presentation

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the post-trial phase of IPR, from the standpoints of both the challenger and the patent owner.

Topics will include:

 

 

  • “Final” Patent Trial and Appeal Board (PTAB) decision
    • Timing
    • Appeal
  • Estoppel
    • Scope
      • Pending proceedings
      • New proceedings
    • Implications for patent owner
    • Implications for challenger
  • Hypotheticals exploring strategic options following PTAB decision

 

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Tuesday, April 3, 2012 – The second in a six-part series

Inter Partes Review Part II: Trial
Karl Renner, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice

 

Click here for the audio
Click here to download the presentation

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the trial phase of IPR, from the standpoints of both the challenger and the patent owner.

Topics will include:

 

 

  • Discovery
    • Timing and sequence
    • Types of discovery contemplated
  • Motion practice
    • What is the role of the Patent Trial and Appeal Board (PTAB)?
    • Types of motions available
  • Claim amendments
    • Timing
  • Oral hearing
    • Who participates?
    • Structure

 

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Inter Partes Review Part I: Pretrial – The first in a six-part series
Karl Renner, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice
Dorothy Whelan, Principal and Co-chair of Fish & Richardson’s Post-Grant Practice

 

Click here for the audio
Click here to download the presentation

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the pretrial phase of IPR, from the standpoints of both the challenger and the patent owner. Topics will include:

 

 

  • Is IPR right for you? When and why might litigation or ex parte reexamination be better options?
  • Preparing the petition
    • Page count. The rules propose strict page limits for the petition.
    • What’s in? Exhibits? Claim charts? Declarations?
    • When/how to request more pages? Motions and standards?
    • How many separate grounds should be raised in the petition?
    • Which patent claims should be included in the petition? All or a subset? How do you choose?
  • Claim constructions. The rules require the petitioner to set forth claim constructions.
    • Which terms do you select?
    • Detail and disclaimer?
    • Alternative constructions?
  • Patent owner preliminary response
    • When/whether to file?
  • Decisions to institute IPR
    • Consequences
    • Rehearing? Appeal?

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