Patent Reform

Workshop A: Wednesday, January 23, 2013

9:00 – 12:00 (Registration and Continental Breakfast at 8:15)

Patent Reform 101: A Primer on the Fundamental Provisions of the America Invents Act

Ryan L. Marshall
Intellectual Property Attorney
Brinks, Hofer, Gilson, & Lione, P.C. (Salt Lake City, UT)

James J. Mullen, Ph.D.
Partner
Morrison & Foerster, L.L.P. (San Diego, CA)

The America Invents Act (AIA) wrought vast changes on what it is arguably the most complex and heavily litigated part of the United States Code this side of Title 26. These changes not only fundamentally alter inventorship, patentability, prior art, and best mode, but they also create entirely new procedures for challenging patents outside federal court. In addition, myriad smaller changes to the code lay waiting to trip up even the most diligent prosecutors and litigators. As a result, it is vital to be certain that you are aware of the major changes to Title 35 U.S.C., and this pre-conference primer’s faculty of in-house and private practice experts will provide you with a clear overview of the numerous sections of the Act that will be the subjects of intensive strategic analysis in the general session. Topics to be discussed will include:

• Definitions in the Act explained
• Outlining the provisions impacting prosecution
  • First-to-file inventorship
  • Accelerated examination
  • Prior art and preissuance
  • Public “disclosure” defined
  • Derivation proceedings
  • Best mode inclusion
• An overview of the litigation and procedural provisions
  • Inter partes review
  • Post grant review
  • 3rd party prior art submission
  • Supplemental examination and reexamination
  • Venue, jurisdiction, and procedural matters
  • False marking changes
• Financial provisions laid out in the AIA
  • Fees and fee setting authority
  • Tax consequences
  • Funding and expenses
• The AIA’s impact on universities and academic institutions
  • How the first-to-file system will affect academic innovation
  • How the AIA advantages universities
• Prioritized examination
  • Determining which technologies can qualify as “important technologies”
  • Data and information required to be eligible for a prioritized examination
• Changes to Patent Term Extension calculations
• Changes to declarations and assignments
• Studies and satellite offices
• Micro-entity certification provisions
  • Qualifying as a micro-entity
  • The risks associated with obtaining micro-entity status
  • Fee reduction provisions
• Identifying what was not included in the AIA and the current status of these initiatives
  • The current status of inequitable conduct under new guidance set forth in Therasense and the impact of changes to supplemental examinations in the AIA on inequitable conduct
  • Applicant Quality Submissions
  • Stays of post-issuance proceedings
  • Limits on injunctions
  • Interlocutory appeals of claim construction

Workshop B: Friday, January 25, 2013

9:00 – 12:00 (Registration and Continental Breakfast at 8:15)

Interactive Working Group Session: A Hypothetical Invention Being Patented Under the AIA

Nicholas Boivin
Director Intellectual Property Counsel
Cubist Pharmaceuticals (Lexington, MA)

Thomas L. Irving
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. (Washington, DC)

In this highly interactive post-conference session, expert patent attorneys will use a hypothetical scenario to demonstrate the ways in which the AIA is impacting patent prosecution. Our faculty of expert practitioners will present attendees with a model company developing a novel product, and walk them through all of the steps of patenting the invention, highlighting the steps along the way that will be impacted by the AIA. Framing each step as a fork in the road with what will sometimes be a difficult and highly consequential choice, the decision-making process will be open for discussion, allowing attendees to grasp precisely how the AIA will impact:

• Whether to file at all in light of prior user rights
• Examination choices, whether it be prioritized, micro-entity, under the PPH, etc.
• Claim drafting in light of changes to prior art, pre-issuance challenge, and more
• Crafting a written description with enabling disclosure
• Choice in filing date in light of the March 16, 2013 switch
• Ensuring that all claims have priority
• Anticipating challenges post-grant

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