Practical Advice for Successfully Handling Post-Grant Challenges in the United States: How to Clear the Deck

As of 13 March 2014, just 18 months after the new post-grant challenges went into effect, the U.S. Patent and Trademark Office (USPTO) has already received close to 1100 petitions. And the number of petitions continues to increase, in what so far has been a very favorable jurisdiction for challengers. While the majority of the filed petitions concern electrical and computer patents, there is a steady flow of new challenges being filed in the mechanical, medical device, life science, chemical and even design patent areas.

We will look closely at some of the valuable lessons already provided by the Patent Trial and Appeal Board (PTAB) including: the timeline for the proceedings is fast, claim construction is key, the patent owner’s ability to amend claims is very limited, discovery is also limited, and the rules of procedure are strictly followed. We will also compare and contrast post-grant review (PGR), covered business method (CBM), and inter partes review (IPR) proceedings to European Patent Office (EPO) oppositions, and explore the pros and cons of challenging validity in a post-grant proceeding before the PTAB.

Please join us as we discuss strategies and best practices for successfully handling post-grant challenges in the United States. Topics will include:

• Strategies for taking advantage of the new procedures, including how to prepare a winning petition
• Strategies for defending your patent when you find yourself in front of the PTAB
• What is a redundant ground and why has it become so important?
• Practical tips and considerations for oral hearings
• How to best position yourself if there is an underlying or concurrent litigation

Moderator:

Eric P. Raciti

Speakers:

C. Gregory Gramenopoulos
Anthony C. Tridico, Ph.D.

Date:
Wednesday, April 30,  2014

Time:

15:00 - 16:00 BST
16:00 - 17:00 CEST
10:00 a.m. - 11:00 a.m. EDT