Post-Grant Review: Challenging the Validity of Patents
For the past years, several provisions from the United States Patent and Trademark Office (USPTO) were made to review the validity of granted patents. Due to the changing U.S. patent system, the American Invents Act (AIA) established post-grant reviews to validate patents in a much wider range of invalidity grounds and applications.
However, with the growing number of significant changes brought by the AIA to the U.S. patent system, more issues qualify for PGR and preemptive challenges arise that generally affect the patent landscape. While the validity of patents is still in question, some claims were found out to be invalid and many of these petitions are still pending, raising a heightened concern among the patent owners and companies. With only few among PGR petitions granted, PGR primarily aims to challenge unpatentable claims, review the patentability of such claims on trial proceedings and produce more grounds to challenging the validity of patents.
In this LIVE Webcast, a panel of distinguished professionals and thought leaders brought together by The Knowledge Group will help the audience understand the fundamental aspects of Post-Grant Reviews. They will also provide an in-depth discussion of the challenges in verifying the validity of patents and the best strategies to avoid potential legal risks and threats.
Key topics include:
- An Overview of Post-Grant Review
- PGR Proceedings: Key Issues and Considerations
- Statutory Grounds Against Patents Claims
- Patent's Validity: Challenging Grounds and Range of Validities
- Patent Eligibility Claims and Judicial Exceptions
- Practice Tips on PGR Petitions
- Trends, Developments and What Lies Ahead
Erin M. Dunston, Shareholder
BUCHANAN INGERSOLL & ROONEY PC
- Overview of the PGRs to date: numbers, trends, and outcomes
- The types of validity attacks that are having the greatest success
- Joinder, disclaimer, and settlement – dos and don’ts based on what we’ve seen
- Common threads found in successful papers/how to catch and keep the Board’s favorable eye
Kerry S. Taylor, Ph.D., Partner
- Aqua Products and motions to amend: where do we go from here
- Will sovereign immunity moot all AIA trials, or will it end up being a rare exception?
- Timing and procedural considerations for petitioners and patent owners in view of the Supreme Court’s upcoming decision in Oil States
Erin M. Dunston is the Biotechnology practice group leader of Buchan Ingersoll & Rooney’s Intellectual Property section and a member of the firm's Associates Committee. She focuses on disputes before the Patent Trial and Appeal Board, district court litigation, opinions, and prosecution — primarily in the fields of biotechnology, pharmaceuticals, and medical devices. Her district court litigation practice includes classic infringement and declaratory judgment cases, as well as Paragraph IV cases.
Erin M. Dunston is the Biotechnology practice group leader of Buchan Ingersoll & Rooney’s Intellectual Property section and a member …
Kerry S. Taylor, Ph.D. is a Partner in the Knobbe Martens San Diego office, practicing intellectual property law since 1998 in areas including Inter Partes Reviews, patent litigation, patent prosecution, strategic planning and counseling relating to infringement and licensing issues, and IP due diligence studies. Kerry is very active in patent prosecution and portfolio strategy development for various clients in the life sciences, pharmaceuticals, and polymer chemistry industries. He received his doctorate degree in biochemistry and molecular biology from the University of Chicago and was awarded the Lucille P. Markey award for his work in the field of structural biology, using primarily x-ray crystallographic techniques to study protein engineering and design. After receiving his doctorate degree, Kerry received his J.D. degree from the University of California – Berkeley School of Law.
Kerry S. Taylor, Ph.D. is a Partner in the Knobbe Martens San Diego office, practicing intellectual property law since 1998 …
Print and review course materials
Method Of Presentation:
Experience in patent laws
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
Areas of Professional Practice
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About BUCHANAN INGERSOLL & ROONEY PC
Buchanan Ingersoll & Rooney PC brings true partnership to our clients. With close to 500 attorneys and government relations professionals in 17 offices in the United States, we have formalized a model for consistently delivering the service attributes our clients most value. A nationally recognized firm, we provide a wide range of services in the areas of intellectual property, health care, financial services and banking, litigation, labor and employment, real estate, corporate and business law, tax, energy, and government relations.
About Knobbe Martens
Consistently ranked among the top intellectual property firms in the nation and worldwide, Knobbe Martens has over 275 lawyers and scientists nationwide and dedicates its practice to all aspects of intellectual property and technology law, including litigation. Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages. The firm is headquartered in Orange County, California, with offices in Los Angeles, New York, San Diego, San Francisco, Seattle, Silicon Valley and Washington, D.C., and enjoys an international reputation for excellence. More information about the firm can be found at www.knobbe.com.