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Post-Grant for Practitioners: A monthly series of webinars focusing on developments in post-grant proceedings and related practice tips.

Since September 16, 2012, patent practitioners have been paying close attention to post-grant proceedings – methods of challenging patent validity at the United States Patent and Trademark Office. Fish & Richardson is one of the most active firms in filing and advising on post-grant matters, and on February 13, 2013, kicked-off a monthly webinar series designed to share practice tips, nuances, observations, and strategy. Information on previous webinars in this series is included below, with the most recent appearing first.


2012 WEBINAR SERIES:


Challenging Patent Validity in the USPTO: Strategic Considerations in View of the USPTO’s Final Rules – Inter Partes Review

August 27, 2012

In this 7th webinar, Karl Renner and Dorothy Whelan walk through several hypotheticals, to help listeners understand how these apply to common situations.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Putting It All Together–Which Tools Are Right for You?

May 8, 2012

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. Other procedures include post-grant review (PGR) and supplemental examination.

Our five previous webinars explored these tools in view of the USPTO’s newly proposed rules. In this webinar, we will examine these tools in the context of a series of hypothetical situations, with the goal of enabling you to make informed strategic decisions on whether and when to invoke the choices that are made available under the AIA.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Post-Grant Review and Derivation Proceedings

April 24, 2012

The America Invents Act (AIA) establishes a number of new trial proceedings to be conducted by a new Patent Trial and Appeal Board in the USPTO. Previous webinars in this series have focused on the new inter partes review (IPR) proceeding. In this webinar, we considered the other two inter partes proceedings established under the AIA – post-grant review (PGR) and derivation proceedings. We covered differences between these proceedings and IPR, and explored tactical and strategic implications following therefrom.

Speakers:
John Phillips, Principal

Supplemental Examination

April 17, 2012

The America Invents Act (AIA) creates a number of USPTO-based procedures for reviewing issued patents. Among these is the new Supplemental Examination procedure. The procedure allows a patent owner to request Supplemental Examination of its issued patent by the USPTO “to consider, reconsider or correct information believed to be relevant to the patent.” In return, the AIA mandates that “a patent may not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of that patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent.” Hence, the Supplemental Examination procedure offers patentees limited amnesty against accusations of inequitable conduct.

Speakers:

Inter Partes Review Part III: Post-Trial

April 10, 2012

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we explored the implications of these rules as they relate to the post-trial phase of IPR, from the standpoints of both the challenger and the patent owner.

Speakers:
John Phillips, Principal
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Inter Partes Review Part II: Trial

April 3, 2012

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we explore the implications of these rules as they relate to the trial phase of IPR, from the standpoints of both the challenger and the patent owner.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC

Inter Partes Review Part I: Pretrial

March 27, 2012

The America Invents Act (AIA) creates a number of USPTO-based procedures for challenging patent validity. One of these procedures is inter partes review (IPR), which, on September 16, 2012, will replace the current inter partes reexamination. The USPTO recently circulated proposed rules governing IPR. In this webinar, we will explore the implications of these rules as they relate to the pretrial phase of IPR, from the standpoints of both the challenger and the patent owner.

Speakers:
Dorothy Whelan, Principal and Post-Grant Practice Co-Chair, Twin Cities
Karl Renner, Principal and Post-Grant Practice Co-Chair, Washington, DC