The America Invents Act in 2013
As March 16, 2013 comes closer, companies and inventors together with their patent attorney need critical assessment of the changes to come concerning the America Invents Act to construct the best IP enforcement strategies.
The Knowledge Group has assembled a panel of intellectual property (IP) thought leaders who will help you understand up-to-date changes and navigate the potentially tricky waters of the America Invents Act. They will also share best practices in protecting your IP. A live interaction with the audience in a question and answer format is also included in this event.
Janet Gongola, Patent Reform Coordinator,
o Effective March 16, 2013
o Statutory framework of AIA 35 USC 102 and how different from pre-AIA law
o What constitutes prior art
o What constitute exceptions to prior art
o Use of applicant statements to designate an application as subject to AIA and when needed
o Effective March 19, 2013
o Strategy for fee setting
o Costs from filing to issue
o Costs from filing to 3rd stage maintenance fee
o Available March 19, 2013
o What papers to file to claim discount
- First-inventor-to-file—overview of new USPTO final rules and examination guidelines
- Fees—overview of new USPTO patent fees
- Micro-entity discount—overview of process to claim micro-entity status
Charles E. Miller, Senior Counsel, Intellectual Property Group ,
Dickstein Shapiro LLP
IMPLEMENTATION AND EFFECTS OF THE AMERICA INVENTS ACT (“AIA”) ON ADMINISTRATIVE PATENT VALIDITY CHALLENGES: ADR , JUDICIAL RECOURSE, AND ESTOPPEL IN POST-GRANT REVIEW PROCEEDINGS
- Pub. L. No. 112-29, 125 Stat. 284-341
- A comprehensive legislative “overhaul” of the U.S. Patent System
- Effective dates of the AIA’s provisions range from 9/16/11 through 3/16/13
- Legislative Intent
- Inter partes patent reexamination
- Inter-partes review
- Post-grant review
- Citation of prior art and written statements
- Patent reexamination
- Supplemental examination
- Transitional Program for covered business-method patents
- Summary re-cap
Steven Spears, Partner,
McDermott Will & Emery LLP
IMPACTS OF THE AIA ON PATENT INFRINGEMENT LITIGATION
- New joinder rules and their impact on multi-defendant cases
- Resulting rise of MDL and ITC cases
- Stays pending PGR proceedings
- Impacts on invalidity defenses
- Prior commercial use
- Best mode
- Prior invention/derivationL
- Estoppel arising from PGR
- Impacts on inequitable conduct defenses
- Supplemental examinations
- “Technical Amendments” removing “deceptive intent” provisions
Cyrus Morton, Partner,
Robins, Kaplan, Miller & Ciresi LLP
- How to decide whether or not to file a petition for a patent office trial connection with litigation.
- The use of experts in litigation and patent office trials.
- Top new concerns for patent holders/plaintiffs under the AIA.
J. Steven Baughman , Partner,
Ropes & Gray LLP
- The PTAB’s procedural guidance to date in post-grant challenge proceedings (covered business method and inter partes review), which emphasizes efficiency concerns, a litigation-oriented approach to the new administrative trials, and a focus on the Board’s one-year deadline for completion of its analysis.
- The PTAB’s substantive guidance to date, indicating its views on various aspects of the scope of proceedings and the Board’s jurisdiction.
- Tactical considerations in deploying the new challenge mechanisms as part of a litigation strategy.
Who Should Attend:
- Patent Litigators
- Patent Licensing Attorneys
- Patent Consultants
- IP Attorneys, And Related Consultants
- General Counsel
- In-House Counsel
- Private Companies
- Public Companies
- Senior Management
- Manufacturing, Pharma, Biotech, Technology Firms and Others
- And Other Related Professionals
Janet Gongola is the Patent Reform Coordinator at the U.S. Patent and Trademark Office (USPTO). In this capacity, she manages all aspects of the agency’s implementation of the America Invents Act. Ms. Gongola also is the Associate Commissioner for Patent Examination Policy and is responsible for developing patent policy for the agency. Previously, Ms. Gongola was an Associate Solicitor in the Office of the Solicitor at the USPTO.
Ms. Gongola served as a law clerk for Chief Judge Paul R. Michel at the Federal Circuit and for Chief Judge Sue L. Robinson in the U.S. District Court for the District of Delaware. In addition, Ms. Gongola worked as a patent attorney, patent agent, and research chemist at Eli Lilly and Company.
Janet Gongola is the Patent Reform Coordinator at the U.S. Patent and Trademark Office (USPTO). In this capacity, she manages …
Charles E. Miller is a Senior Counsel in Dickstein Shapiro’s Intellectual Property Practice. He has doctorate degrees in both chemistry and law and practices primarily patent law in the firm’s New York office. At Dickstein Shapiro, Dr. Miller continues his practice in counseling clients mainly in the chemical and pharmaceutical industries, managing their intellectual property portfolios, and representing their interests extensively in technology-related litigation, proceedings before the U.S. Patent and Trademark Office, alternative dispute resolution, and licensing. As a practitioner, Dr. Miller also has been a commercial arbitrator for the American Arbitration Association and for the World Intellectual Property Organization. He has testified in patent and antitrust cases as an expert on patent litigation and U.S. Patent and Trademark Office practice and procedure, and has served as special master in patent infringement litigation on appointment by the U.S. District Court. Dr. Miller is also an adjunct professor at St. John’s University School of Law where he teaches patent law.
Charles E. Miller is a Senior Counsel in Dickstein Shapiro’s Intellectual Property Practice. He has doctorate degrees in both chemistry …
Steven G. Spears is partner-in-charge of the Houston office of the law firm of McDermott Will & Emery LLP. Steven focuses his practice on patent, trade secret and other technology-related litigation involving the chemical, biotechnology and petrochemical industries. He has participated in all aspects of such litigations, including numerous jury trials and appeals before the Federal Circuit. In addition to litigation matters, Steven also counsels clients on intellectual property enforcement, freedom to operate and licensing issues.
Steven has litigated intellectual property cases in federal courts in Texas, California, Delaware, Missouri, North Carolina, Illinois, Indiana, Nebraska, Louisiana and Florida. He has represented clients in AAA arbitration proceedings and has been consulted on intellectual property-related actions brought in Belgium, Canada, France, Germany, Australia, Argentina and the European Patent Office.
Steven G. Spears is partner-in-charge of the Houston office of the law firm of McDermott Will & Emery LLP. Steven …
Cyrus A. Morton is a partner with Robins, Kaplan, Miller & Ciresi L.L.P. As an inventor, a trial attorney focusing on patent litigation, and having done patent prosecution work earlier in his career, Mr. Morton brings his clients a perspective of understanding patent issues from all sides. His litigation experience covers a wide variety of technologies and matters, ranging from million-dollar silicon wafer surface inspection systems to various types of medical technology, to a hunting favorite – spinning-wing duck decoys. He can be reached at firstname.lastname@example.org.
Cyrus A. Morton is a partner with Robins, Kaplan, Miller & Ciresi L.L.P. As an inventor, a trial attorney focusing …
Print and review course materials
Method of Presentation:
On-demand Webcast (CLE)
NASBA Field of Study:
NY Category of CLE Credit:
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
Dickstein Shapiro LLP
About Dickstein Shapiro LLP
Combining decades of litigation experience with a robust procurement and asset management practice, Dickstein Shapiro’s Intellectual Property attorneys devise strategies to help clients protect IP assets while maximizing their value. We have handled litigations on both the plaintiff side and defense side involving claims from a few million to hundreds of millions of dollars, including successfully defending suits where patent owners sought hundreds of millions in damages and obtaining a judgment in excess of $500 million on behalf of a plaintiff. In addition to litigation, Dickstein Shapiro attorneys develop comprehensive intellectual property programs and strategies encompassing all aspects of clients’ intellectual property needs, including asset management, patent and trademark procurement, licensing, and counseling. For more information, please visit:www.dicksteinshapiro.com
About McDermott Will & Emery LLP
McDermott Will & Emery is a premier international law firm with a diversified business practice. McDermott has more than 1,100 lawyers and offices in Boston, Brussels, Chicago, Düsseldorf, Frankfurt, Houston, London, Los Angeles, Miami, Milan, Munich, New York, Orange County, Paris, Rome, Seoul, Silicon Valley and Washington, D.C. Further extending its reach in Asia, McDermott has a strategic alliance with MWE China Law Offices in Shanghai.
McDermott has over 75 years of serving a broad range of client interests. The expansion of its international platform has supported numerous cross-border transactions and litigation matters, while providing the experience necessary to offer corporate and commercial, international and domestic tax, labor and benefits, competition, intellectual property and regulatory counsel to clients across all industries.
About Robins, Kaplan, Miller & Ciresi LLP
National litigation firm Robins, Kaplan, Miller & Ciresi L.L.P. has been advocating on behalf of clients for more than 70 years. Serving the needs of individuals, businesses and multi-national corporations, our 250+ attorneys stand beside our clients to assess and manage risk through the life-cycle of their specific business goals and most critical legal challenges—both in and out of the courtroom.www.rkmc.com
About Ropes & Gray LLP
Ropes & Gray is a leading global law firm with offices in New York, Washington, D.C., Boston, Chicago, San Francisco, Silicon Valley, London, Hong Kong, Shanghai, Tokyo and Seoul. We represent interests across a broad spectrum of industries and businesses and have market-leading positions in, among others, private equity, investment management, health care and life sciences, and intellectual property. Client by client, we’ve built a reputation for high-quality work, a pragmatic approach, and the highest standards of service and ethics.