Post-Grant Patent Opposition in Europe and the U.S.
Overview:
Under the America Invents Act (AIA), the US Patent and Trade Office (USPTO) received more than 2,700 petitions for inter partes review (IPR) that challenge the patentability of an issued patent. In Europe, such oppositions are long standing.
Since many inventions are protected by quite closely related patents Europe and the US, patent owners need to co-ordinate post-grant patent challenges or defenses to challenges in both jurisdictions. But, challenging the validity of a patent through the court in Europe and the US can be time consuming and expensive. Any opposition must be filed within nine months with the European Patent Office (EPO) and EPO data show that approximately two thirds of oppositions revoke or amend the opposed patent in 2013. Other issues for consideration include how and where a patent is challenged, the grounds for challenging patents, fees for each venue, discovery, amendments and litigation estoppel.
Patent counsel must be able to understand and the complex procedures of the EPO and USPTO to ensure strong protection of patent that might face such post-grant opposition in one or both jurisdictions.
In this CLE course, a panel of distinguished professionals and thought leaders assembled by The Knowledge Group will review the grounds for Post-Grant Patent Opposition in Europe and the US and discuss how they differ from those in Europe; how discovery and expert testimony affect the opposition, and strategies counsel use to optimize post-grant patent oppositions in Europe and the U.S.
Key topics include:
- America Invents Act (AIA)
- European Patent Convention (EPC)
- Post-grant Patent Oppositions
- Patent Litigation
- European Proceedings
- US Proceedings
- Primary similarities
- Primary differences
- Timelines
- Consistency Across Jurisdictions
- Post-grant Opposition Protection
Agenda:
Introduction
Christopher P. Carroll, Counsel
Ropes & Gray LLP
Introduction to EPO Oppositions
- What is an EPO opposition
- Requirements
- Statistics
- Advantages/Risk
Heather Petruzzi, Counsel
WilmerHale
Introduction to Post Grant Proceeding in US
- What is IPR/PGR
- Requirements
- Statistics
- Advantages/Risk
- Comparison of US Post Grant vs. EPO Opp.
Claus Elmeros, Partner
HØIBERG A/S
EPO Oppositions
- Substantive basis ( Patentability, Novelty/Inventive step, added matter)
- Problems (good point by Claus about added matter attack)
- Strategies for optimization/winning
- Coordination of EPO Opp. and US IPR/PGR (from EP perspective)
Michael T. Siekman, Shareholder
Wolf Greenfield
Richard F. Giunta, Shareholder
Wolf Greenfield
Eugene T. Perez, Partner
Birch, Stewart, Kolasch & Birch, LLP
Post Grant Proceeding in US
- Substantive basis
- Problems
- Strategies for optimization/winning
- Real Party in Interest Requirement in IPR/PGR/CBM
- Claim construction before the PTAB
- USPTO Rules changes (“Quick Fixes”)
- Pending Legislative Changes
Sander van Rijnswou, PhD, LLB, Associate Partner
DeltaPatents
Impact of the Unified Patent Court (UPC) on post grant proceedings
- Status of UPC
- Central revocation under the UPC
- Applicability of UPC. Considering the opt-out and unitary patents
- EPO opposition versus UPC proceedings
Conclusion
Who Should Attend:
- IP Attorneys
- IP Consultants
- Patent Attorneys
- Patent Consultants
- Patent Litigators
- Other Related/Interested Professionals
Christopher P. Carroll is counsel in the Boston and London offices of Ropes & Gray. In addition to being a …
Heather M. Petruzzi, counsel at WilmerHale, focuses her practice on complex intellectual property issues. She represents clients across a variety …
Michael Siekman counsels clients of all sizes in the biotechnology and pharmaceutical industries on a range of intellectual property matters, …
Rich Giunta has over 25 years’ experience and specializes in post-grant proceedings before the United States Patent Office. He co-chairs …
Eugene Perez has practiced in intellectual property field since 2000, specializing in chemical, pharmaceutical and biotechnology patents, with some work …
Claus Elmeros is a Partner and European Patent Attorney and European Design Attorney at HØIBERG A/S and work for clients …
Sander van Rijnswou is a European patent attorney specializing in computer-implemented algorithms and cryptography. He is an experienced tutor in …
Course Level:
Intermediate
Advance Preparation:
Print and review course materials
Method of Presentation:
On-demand Webcast (CLE)
Prerequisite:
NONE
Course Code:
144820
NASBA Field of Study:
Business Law
NY Category of CLE Credit:
Skills
Total Credits:
2.0 CLE
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SPEAKERS' FIRMS:
About Ropes & Gray LLP
Ropes & Gray is one of the world’s premier law firms, with approximately 1,100 lawyers serving clients in major centers of business, finance, technology and government. The firm has offices in New York, Washington, D.C., Boston, Chicago, San Francisco, Silicon Valley, London, Hong Kong, Shanghai, Seoul and Tokyo, and has consistently been recognized for its leading practices in many areas, including private equity, M&A, life sciences, health care, finance, investment management, hedge funds, tax, intellectual property, litigation, securities litigation and government enforcement.
Website: https://www.ropesgray.com/
About WilmerHale
WilmerHale is a leading international law firm with more than 200 attorneys focused on intellectual property matters in the United States, Europe and Asia. The firm’s lawyers are experienced in providing comprehensive solutions to the intellectual property business challenges that face companies at all stages of growth and in every aspect of their business that involves the acquisition, exploitation or protection of intellectual property. WilmerHale has been deeply involved in patent litigation since the battle between Amgen and Genetics Institute over EPO in the 1980s. Since that time, the firm has represented clients such as Roche, GlaxoSmithKline and Becton Dickinson in many of the landmark patent cases in these industries.
Website: https://www.wilmerhale.com/
About Wolf Greenfield
Wolf, Greenfield & Sacks, P.C. is the largest New England-based law firm focused solely on intellectual property (IP) law. The firm’s lawyers are technical and legal specialists at the forefront of their fields supporting leading companies, inventors, and research facilities with a full range of intellectual property portfolio management including patent, copyright and trademark acquisition, prosecution and litigation; opinions and strategic counseling; trade dress protection; intellectual property audits and due diligence; and licensing and other issues related to commercialization of intellectual property. Now in its ninth decade, Wolf Greenfield continues to represent innovators in the fields of biotechnology, chemical & materials technologies, pharmaceuticals, clean technology, electrical & computer technologies, mechanical technologies, medical devices, and consumer products. Learn more at www.wolfgreenfield.com.
Website: https://www.wolfgreenfield.com/
About Birch, Stewart, Kolasch & Birch, LLP
Since 1976, Birch, Stewart, Kolasch and Birch, LLP (BSKB) has been providing a full range of intellectual property law services to clients in the areas of patent prosecution, post-grant review, litigation, ITC litigation, opinions and counseling, trademarks, design patents and licensing. BSKB’s knowledgeable attorneys and agents hold advanced degrees and are experienced in the fields of chemistry, electronics and IT, mechanical engineering and life sciences/biotechnology.
BSKB believes in offering every client quality, personalized service, and are committed to educating clients to help them make the most of their intellectual property. BSKB has a rich tradition of offering seminars on intellectual property law that have been attended by practitioners from around the world.
Website: https://www.bskb.com/
About HØIBERG A/S
HØIBERG A/S is a full service patent and trademark company providing services within the fields of Intellectual Property Rights (IPR), including Patents, Trademarks and Designs, Innovation Management, Technology Transfer and Business Development
HØIBERG A/S was founded in 1995 by Susanne Høiberg as a life sciences patent firm. Since its foundation, HØIBERG has undergone rapid development. In 2006 the company merged with Elmeros Patents, thereby acquiring substantial IP rights expertise within the fields of electronics and mechanics.
The company now employs about 40 highly qualified people at offices in Copenhagen and Aarhus. All of the patent attorneys at HØIBERG hold degrees from international universities and work in all fields of technology, ranging from biotechnology and medico-technology, through mechanical technologies, physics, electronics, optics and software to manufacturing technology and mechanical technologies.
HØIBERG’s clients include a wide range of national and international companies, start-up companies and researchers from the universities and hospitals.
Website: https://www.hoiberg.com/
About DeltaPatents
DeltaPatents is a full-service patent attorney firm based in Eindhoven and Leiden—both widely recognized hubs of technology and learning in The Netherlands. Their patent professionals have extensive industrial experience and work exclusively in English for both multinational enterprises and local startups.
They are proud to be the leading educator of the next generation of European patent attorneys and IP administrators. DeltaPatents provide an extensive range of IP training courses that are continuously maintained with the latest law changes, case law, and procedural requirements.
Website: https://www.deltapatents.com/