PTAB’s New Standard on Remand Proceedings: What Is It and Why You Need to Know
In November 2017, the Patent Trial and Appeal Board (PTAB) issued a revised Standard Operating Procedure 9 (SOP 9) which explains the procedures that will be used to address the conduct of cases remanded from the Federal Circuit, including decisions resulting from IPR, PGR and CBM review as well as ex parte prosecution and reexamination proceedings. The revised SOP 9 provides valuable guidance to the parties, the public, and the PTAB on how remand proceedings should be handled.
In a LIVE Webcast, a panel of thought leaders and practitioners assembled by The Knowledge Group will discuss the significance of PTAB's new standard operating procedure on remand proceedings and how it will affect remand cases.
Key topics include:
- Understanding the Standard Operating Procedure 9
- Timeline for Issuing Decisions on Remand
- Responsibilities of Parties Involved in Remand Decision
- Default Procedures for Common Remand Scenarios
- Implications to Current Remand Cases
Brian C. McCormack, Partner
Baker & McKenzie LLP
Yoon Chae, Attorney
Baker & McKenzie LLP
- The revised Standard Operating Procedure 9 (SOP 9) is intended to create internal norms for the administration of the PTAB to promote consistency, as well as to provide guidance to the parties, the public, and the PTAB regarding PTAB decisions remanded from the Federal Circuit.
- SOP 9 states that the targeted time to issue decisions on remand cases is six months within receiving the Federal Circuit’s mandate.
- SOP 9 requires the panel to schedule a meeting with the Chief Administrative Patent Judge and/or the Deputy Chief Administrative Patent Judge (“remand meeting”) within 30 days of receiving notice of the Federal Circuit’s decision and before the issuance of the Federal Circuit’s mandate.
- Appendix 1 provides guidance for panels in preparing for the remand meetings, including the topics the panel must be ready to discuss (e.g., procedural history, issues on remand, contemplated procedures for the proceeding on remand, and any possible policy considerations).
- Appendix 2 provides guidance for the parties on remand procedures (e.g., scheduling a teleconference within 10 business days after the mandate, conducting a meet-and-confer before the teleconference, default trial procedures, default appeal procedures, and considerations guiding remand procedures in trials) and illustrative examples from recent cases.
Who Should Attend:
- Patent Licensing Attorneys
- Patent Law Attorneys
- Patent Prosecutors
- Patent Consultants
- Patent Litigators
- Private Companies
Brian McCormack has been with the Dallas office of Baker McKenzie since 1996. He mainly handles intellectual property counseling, patent office trials, and patent litigation. Having been with the firm for twenty years, Brian is a thoroughly international IP lawyer and has helped clients with numerous legal issues in Asia, Europe, and Latin America. Formerly an engineer and patent agent at Texas Instruments, Brian has always had a focus on and aptitude for technology, and has led teams of lawyers in diverse industries. Brian received his JD from Southern Methodist University and holds both bachelor’s and master’s degrees in electrical engineering.
Brian McCormack has been with the Dallas office of Baker McKenzie since 1996. He mainly handles intellectual property counseling, patent …
Yoon Chae is an associate in Baker McKenzie's Dallas office, where he handles patent litigation and patent prosecution matters. He represents both plaintiffs and defendants at all stages of patent litigation, and has worked on cases at the U.S. International Trade Commission, U.S. Court of Federal Claims, and various federal district courts. He is also actively involved in Baker McKenzie’s innovation programs, and is presently working as a Fellow at the World Economic Forum’s Center for the Fourth Industrial Revolution in San Francisco, researching ways to maximize the benefits of science and emerging technologies for society. Yoon Chae received his JD from University of Michigan Law School and bachelor’s degree in electrical engineering from the University of Texas at Austin.
Yoon Chae is an associate in Baker McKenzie's Dallas office, where he handles patent litigation and patent prosecution matters. He …
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Method of Presentation:
Experience in patent law
NY Category of CLE Credit:
Areas of Professional Practice
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About Baker & McKenzie LLP
Baker McKenzie is a multinational law firm with 77 offices in over 47 countries. Since 1962, its intellectual property practice group has helped the world's leading multinational companies in all aspects of the acquisition, protection, enforcement, and exploitation of their IP rights. The IP practice has been ranked Band 1 by Chambers Global since 2009 and has been named “Global Law Firm of the Year” at the 2017 Managing Intellectual Property awards.