USPTO’s Proposed Changes to AIA Post-Grant Amendment Proceedings: Preparing for the Big Shift
On August 19, 2015, the United States Patent and Trademark Office (USPTO) has issued its proposed changes to the America Invents Act (AIA) post-grant proceedings. The proposed changes are intended to address public concerns after the Office implemented an earlier set of Patent Trial and Appeal Board (PTAB) proceeding “quick fixes.” The newly proposed modifications include the ability of patent owners to use new declarants in the preliminary response, the requirement of Rule 11-type certifications on all parties’ papers, and the increased time allotted for the review of proposed demonstratives before the final hearing.
It can be expected that the Office will go forward with the refinement of the AIA trials’ governing rules and will continue to seek comments in the future. Patent owners and challengers alike should be all eyes to this shift to be able to cope with the evolving post-grant amendment landscape.
In this two-hour LIVE Webcast, a panel of key thought leaders organized by The Knowledge Group will provide an overview to help you understand the critical elements of the proposed changes to the America Invents Act (AIA) post-grant proceedings and its potential effects to patent owners and challengers.
Key topics include:
- USPTO Proposed Rule Changes: An Overview
- Current Claim Amendment Requirements
- Significance of Amendments
- Development of Effective Strategy at the USPTO
- Regulatory Forecasts
Eugene T. Perez, Partner
Birch, Stewart, Kolasch & Birch, LLP
- Basics of IPR, PGR and PGR for CBM
- Recent PTAB Statistics
- Some of Proposed Patent Law Changes by Congress
- Recap of “Quick Fixes”
- Summary of PTAB Proposed Rules
- Cuozzo v. Lee: Changes on the Horizon?
Mark W. Ford, Attorney
The Patent Owner is now allowed to rely on new testimonial evidence in its preliminary response.
- Potential changes to how a petitioner drafts its petition; and
- What type of testimonial evidence should be relied on (and avoided) in a patent owner’s preliminary response.
Change in standards governing discovery relating to secondary considerations of nonobviousness. A petitioner now need only show “some nexus” between the claimed invention and information being sought through additional discovery.
- What the “some nexus” standard means ,and
- How to satisfy the “some nexus” standard.
Jamaica Szeliga, Partner
Leydig, Voit & Mayer, Ltd
The Potential Effects of the USPTO’s Proposed Changes to Post-Grant Proceedings in Pharmaceutical and Biological Matters.
- Background of the use of Post-Grant Proceedings for pharma and bio patents.
- Pre-institution amendments: What might be the effects of expanding the evidence allowed in the patent owner’s preliminary response and giving the option for a petitioner reply?
- Rule 11 implementation: Is this going to have any effect on “Kyle Bass”- style petitions?
- The changes not made: Claim amendment practice and the handling of multiple proceedings. What challenges lie ahead for the industry.
Jonathan K. Waldrop, Partner
Kasowitz Benson Torres & Friedman LLP
The Board’s Broad Discretion: Multiple proceedings, serial petitions, additional discovery, motions to amend etc.
- Board rejected attempts for rigid rules
- Implications for Broad Discretion
- Brave New World: In search of more certainty in patent proceedings
Who Should Attend:
- Patent Licensing Attorneys
- Patent Attorneys
- Patent Prosecutors
- Patent Consultants
- Patent Litigators
- Private Companies
- Private Practitioners
- Other related and interested individuals
Eugene Perez has practiced in intellectual property field since 2000, specializing in chemical, pharmaceutical and biotechnology patents, with some work in the mechanical arts. His experience includes all aspects of patent prosecution for patent and reissue applications, including corresponding with clients and preparing replies to all USPTO correspondence such as Office Actions, Restriction Requirements, Appeal Briefs, and filing Preissuance Submissions (third party submissions). The experience also includes initiating and conducting post-grant proceedings such as inter partes reviews, ex parte and inter partes reexamination, as well as conducting legal research and preparing freedom-to-operate, patentability, infringement, and validity opinion letters. Mr. Perez is also the editor of the microsite dedicated to Post-Grant Patent practice (www.postgrantproceedings.com), and provides his clients comprehensive post-grant patent counseling including advice on strategies and pitfalls of the emerging USPTO post-grant proceedings. Mr. Perez has also argued before the Court of Appeals for the Federal Circuit, as well as before the USPTO Patent Trial and Appeal Board (previously the Board of Patent Appeals and Interferences).
Eugene Perez has practiced in intellectual property field since 2000, specializing in chemical, pharmaceutical and biotechnology patents, with some work …
Mark Ford has practiced law with an emphasis in the area of intellectual property since 2005. Mark specializes in representing clients before the United States Patent and Trademark Office in post-grant proceedings, including inter-partes reviews, covered business method reviews, and reexamination proceedings. In addition to his post-grant practice, Mark is also an experienced litigator, having represented both plaintiffs and defendants in disputes involving a wide variety of technologies including fitness equipment, electrical and electromechanical systems, and computer software and hardware.
Mark Ford has practiced law with an emphasis in the area of intellectual property since 2005. Mark specializes in representing …
Jonathan K. Waldrop represents industry leading companies in patent and trademark litigation involving interactive web technologies, video-on-demand telecommunications, cable technology, computer-assisted sales processes, medical devices, cooking ovens, gaming systems and complex financial transactions. He is also experienced in handling commercial and antitrust litigation matters.
Jon’s clients include Google, YouTube and Adobe, world-leading technology companies, and Cox Communications, the third largest cable television provider in the U.S. He has acted as lead trial counsel in many cases for his clients and has a history of achieving favorable jury verdicts.
Jon is recognized in The Best Lawyers in America©, The Legal 500, and as a Northern California and Georgia “Rising Star” by Super Lawyers. Jon also earned the National Institute for Trial Advocacy's "Master Advocate" designation in 2015, and is a fellow in the Litigation Counsel of America's Trial Lawyer Honorary Society.
Jonathan K. Waldrop represents industry leading companies in patent and trademark litigation involving interactive web technologies, video-on-demand telecommunications, cable technology, computer-assisted …
Jamaica Potts Szeliga is a shareholder at Leydig, Voit & Mayer in its Washington, D.C. office. Ms. Szeliga is a former clerk for the United States Court of Appeals for the Federal Circuit and is registered to practice before the United States Patent and Trademark Office. Her practice focuses primarily on intellectual property litigation, where she has litigated cases involving biotechnology and biologics, pharmaceuticals, and medical devices, as well as matters involving telecommunications, electronics, consumer goods, and mechanical products, among others.
Ms. Szeliga graduated magna cum laude from Harvard Law School in 2002, and received her Bachelor of Science degree in Chemistry, with a minor in Biology, with distinction, from Stanford University in 1999. She is admitted to the District of Columbia and the New York State bar.
Jamaica Potts Szeliga is a shareholder at Leydig, Voit & Mayer in its Washington, D.C. office. Ms. Szeliga is a …
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About Birch, Stewart, Kolasch & Birch, LLP
Birch, Stewart, Kolasch and Birch, LLP (BSKB) is a full service intellectual property law firm, offering services in the areas of patent prosecution, post-grant review, litigation, ITC litigation, opinions and counseling, design patents, trademarks and licensing. Our knowledgeable attorneys and agents hold advanced degrees and are experienced in the fields of chemistry, electronics and IT, mechanical engineering and life sciences/biotechnology.
We believe in offering every client quality, personalized service, and are committed to educating our 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.
About Maschoff Brennan
Maschoff Brennan PLLC is a full-service intellectual property and commercial litigation law firm with offices in Park City, Salt Lake City and Orange County. Maschoff Brennan’s attorneys focus on patent and trademark prosecution, intellectual property and complex litigation (including patent, trademark, copyright, and commercial litigation and counseling), post-grant patent proceedings, opinions, due diligence and related investigations, licensing and transactions, and strategic portfolio management and counseling. Maschoff Brennan’s clients include Fortune 500 companies, multinational corporations, individual inventors, startups, and world-renowned universities.
About Kasowitz Benson Torres & Friedman LLP
Kasowitz, Benson, Torres & Friedman LLP is a national law firm primarily focusing on complex commercial litigation. The firm’s highly talented lawyers are committed to pursuing creative, aggressive and innovative approaches to our clients’ most challenging legal matters. Our clients include leading companies in the high-tech, manufacturing, chemical, computer, energy, entertainment, consumer products, pharmaceutical and telecommunications industries, as well as major hedge funds, private equity firms, commercial banks, real estate developers and investors, regulated utilities and individuals. Our lawyers have been recognized by, among others, Chambers USA, The Legal 500, Benchmark Litigation, Best Lawyers in America, Law360 and Lawdragon for excellence in their fields. The firm has offices in New York, Washington, DC, Silicon Valley, Los Angeles, Houston, Atlanta, San Francisco, Miami, and Newark.
About Leydig, Voit & Mayer, Ltd
At the forefront of intellectual property law for more than a century, Leydig, Voit & Mayer provides valued advice and trusted counsel on intellectual property issues to industry leaders around the world. Leydig's IP litigation, licensing, and prosecution services encompass patent, trademark, copyright, trade secrets, Internet and other IP issues, including post-grant proceedings. The firm represents clients in various industries including pharmaceuticals, chemical and chemical engineering, software, electronics, manufacturing and machine design, biotechnology, medical devices, financial services, and consumer products. The wealth of litigation and technical experience of the firm’s attorneys and staff enables the firm to tailor its services to the unique needs of each client.