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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, January 28, 2020

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will provide patent counsel with an overview of the current USPTO's Patent Trial & Appeal Board (PTAB) and patent litigation landscape with an eye toward emerging trends and challenges for patent owners. The panel will offer best practices to minimize the threat of post-grant patent challenges as well as prosecution strategies to strengthen and/or insulate patent portfolios from PTAB attack.

Faculty

Kevin B. Laurence
Partner
Laurence & Phillips, LLP

Mr. Laurence has been included in IAM’s list of leading post-grant practitioners every year since 2012.  He has taught a course as an adjunct professor at the George Washington University Law School on post-grant patent practice since 2015. Mr. Laurence served as an instructor for the Patent Resources Group in three-day courses on post-grant proceedings held biannually during 2009–2019 and is a co-author of a two-volume treatise titled Post-Grant Patent Practice provided in conjunction with the courses.  Best Lawyers in America named him 2016 “Lawyer of the Year” in Patent Law for Washington, D.C. 

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Scott A. McKeown
Shareholder
Wolf Greenfield & Sacks

Mr. McKeown is a shareholder with Wolf, Greenfield & Sacks in Washington D.C. and a professorial Lecturer in Law at The George Washington University Law School.  Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, he is one of the most active PTAB trial attorneys in the U.S., having handled more than 400 PTAB matters, including those in which more than $500 million was at stake. Mr. McKeown currently serves as lead post-grant counsel to some of the world’s best-known innovators, and is the editor of the award-winning blog PatentsPostGrant.com. 

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Description

In April of 2019, the USPTO issued a notice in the Federal Register reminding stakeholders of its patent reissue and reexamination mechanisms. These post-grant proceedings offer both offensive and defensive strategies to stakeholders. For example, these proceedings can operate in tandem to an AIA trial to provide an alternative path to amendment, or be utilized to strategically prepare for, or even recover from, such patent challenges. Given the impact of AIA trial proceedings on the monetization landscape, it is critical for stakeholders to be well versed in advanced patent reissue and reexamination options.

As a patent owner, these proceedings can offer ex parte paths to more fulsome amendment options as compared to the PTAB, restarting of continuation practices, or pre-litigation rehabilitation of problem patent claims. On the challenger side, reexamination offers options not possible before the PTAB.

Listen as our authoritative panel reviews the current post-grant/patent litigation landscape with an eye toward emerging trends and challenges facing patent owners and challengers alike. The panel will also offer best practices for utilizing patent reissue/reexamination, potential pitfalls, and nuances of these unique mechanisms.

Outline

  1. Preparing for the fight
    1. The monetization landscape
      1. Rehabilitating the asset
        1. Reissue
          1. What can you do, when, and how long?
            1. Mechanics
          2. Downsides?
          3. PTAB overlap, considerations
        2. Reexamination
          1. What can you do, when, and how long?
            1. Mechanics
          2. Downsides?
          3. PTAB overlap, considerations
    2. Parallel proceedings before the USPTO
    3. Litigation tactics

Benefits

The panel will review these and other key issues:

  • How can patent owners utilize these proceedings to lessen the PTAB threat?
  • What does reexamination offer to challengers in the PTAB world?
  • Which proceeding is the best path to a goal that might be reached by either option?