PTO Procedures Under The America Invents Act

A- Patent Reform Boot Camp for PTO Practice: Laying the Foundation for New and Amended PTO Procedures under the America Invents Act

David E. Boundy
Vice President, Assistant General Counsel, Intellectual Property
Cantor Fitzgerald LP (Boston, MA)

J. Eric Thies
Assistant Counsel
Merck (Rahway, NJ)

Philip Wadsworth
VP & Legal Counsel, Global IP
Qualcomm, Inc. (San Diego, CA)

This hands-on workshop will provide you with an in-depth overview of the America Invents Act (AIA) as well as critical insights into nuances which will help you understand the dynamics of the new U.S. patent system which this law has created. The workshop leaders will lay the necessary foundation for you to comprehend thoroughly the dynamics of the new, revised, and amended PTO procedures under the AIA. They also will help you fully appreciate the complexities, challenges, and conundrums which these procedures present and which will be examined more fully during the main conference.

Points of discussion will include:

• The conversion from a first to invent to a first to file system and understanding its repercussions- elimination of interference proceedings and adoption of derivation practice
• Expansion of prior art definition
• Elimination of best mode as a grounds for raising a claim of invalidity
• Prior user rights defense
• Pre-issue challenges
• Institution of supplemental proceedings
  • correction of errors
  • relationship to inequitable conduct
• Creation of new post-issuance procedures and their signifi cance
  • supplemental examination
  • post-grant review
  • inter partes review
• Limitations on false markings
• The creation of the Patent Trial and Appeal Board
  • role of Administrative Law Judges
  • role of Patent Examiners

Tuesday, March 27, 2012

2:45 pm – 5:45 pm (Registration Opens at 2:15 pm)

B- Master Class on Parallel Proceedings: Strategies for Preserving Causes of Action and Your Case in Chief in Multiple and Simultaneous Forums

Brenton R. Babcock
Partner
Knobbe Martens Olson & Bear LLP(Irvine, CA)

Michael A. Davitz
Partner
Axinn, Veltrop & Harkrider LLP(New York, NY)

Scott A. McKeown
Partner
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.(Alexandria, VA)

Oftentimes, parties engaged in various third party challenges before the PTO are also involved in parallel proceedings in Federal Court, the ITC, and sometimes all three forums. It is important for every practitioner who engages in the course of multiple proceedings to navigate the nuances of these concurrent forums with agility and skill. The passage of the America Invents Act has added new procedural and substantive considerations to parallel proceedings before these various forums, the most notable, perhaps being the estoppel provisions under current inter partes re-examination and the new inter partes review procedure. This Master Class will provide you with critical strategies for steering the course of proceedings in multiple forums.

Points of discussion will include:

• Questions of patentability that can be raised in each forum
• Estoppel effects
• Specific concerns for joinder
• Stays of various District court and ITC proceedings in view of pending decisions from the PTO

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