This interactive talk covers the new post-grant proceedings made available for the first time at the USPTO under the America Invents Act. Michael Messinger, Partner at Sterne Kessler Goldstein & Fox will lead us as we look at the various features of inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM). This talk covers the pros and cons of using these different strategies and how company decision-makers can take advantage of them. We discuss the parties and technologies involved in IPR and CBM proceedings already, and what we have learned one year in from actual case examples. Issues faced by patent defendants and patent owners are covered. These include available patentability grounds, scope of discovery, time limits, estoppels, and stays. We also describe the newly created Patent Trial and Appeal Board administrating these trials.
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Date: Tuesday May 14, 2013 from 12:00 PM to 1:30 PM EDT
Location: Cincinnatian Hotel
The America Invents Act (H.R. 1249) promises to bring substantial changes to the U.S. patent system, including new mechanisms for challenging patents at the U.S. Patent and Trademark Office. One of the new mechanisms is a post-grant review proceeding (PGR), which will provide patent challengers expanded bases on which to attack patents. Post-grant review, however, will only be available to challenge patents that issue under the AIA’s new first-to-file regime. Of more immediate concern, the AIA also provides for a new inter partes review (“IPR”) procedure that will be available to challenge any
enforceable patent, including those issued before enactment of the AIA.
Ryan Willis will discuss the basics of each of these new procedures. He will also discuss litigation considerations, including when the use of these procedures in addition to or in place of litigation may be appropriate, and how the use of these procedures may affect a client’s choice to litigate following their use.
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