One of the most controversial and worrisome provisions of the Leahy-Smith America Invents Act is its introduction of a new post-grant review process. The new process, based on experience with a similar review process in Europe, is expected to result in an explosion in the number of challenges, particularly from large companies attempting to delay or derail start-ups and innovations from smaller organizations, including universities. The additional risks may affect licensing efforts, as well as the willingness of investors to commit to patented technologies until the post-grant review period has expired, or any PGRs initiated are settled.
While the changes won’t take effect until September 2012, tech transfer professionals and IP practitioners need to quickly get up to speed on the details of this potentially damaging provision. That’s why Technology Transfer Tactics has teamed up with attorney experts Michael T. Siekman and Ed Walsh from the Wolf Greenfield IP Law Firm to present this hour-long educational webinar:
Life Under AIA: Anticipating and
Surviving Post Grant Challenges
On-Demand Video, DVD, or PDF Transcript
Mr. Siekman and Mr. Walsh will provide a detailed review of the post-grant review provisions, their likely impact, remaining uncertainties as the USPTO deals with implementation, and strategies to begin planning for now in both patent drafting and responding effectively to post-grant actions. They’ll discuss:
- The rules for post-grant opposition
- Differences relative to Inter Partes reexam, interferences
- Industry-specific issues
- Interface with litigation: Estoppel rules, automatic stays, and more
- Filing a preliminary response
- The “more likely than not” standard
- Discovery rules
- Amending the patent – cancelling or modifying claims
- Appeal procedures
- Comparison with EPO (European Patent Office) oppositions, and lessons learned from Europe’s experience
- Crystal ball gazing: Implementation by USPTO still to come
- Practical issues for TTOs
Your Expert Presenters:
Michael T. Siekman – Shareholder, Wolf Greenfield IP Law Firm. Michael counsels clients of all sizes in the biotechnology and pharmaceutical industries on a range of intellectual property matters, including patent prosecution and portfolio strategy, interferences, due diligence, licensing, opinions, and litigation. His over 20 years of experience has involved blockbuster drugs as well as orphan drugs, and he has managed patent portfolios for several pioneering biotechnologies. Michael has extensive experience extending patent terms in the U.S. and abroad. He has obtained several Patent Term Extensions and Supplementary Protection Certificates, and he has maximized Patent Term Adjustment for clients by petition and litigation. Michael advises brand name and generic clients regarding Hatch-Waxman issues, has participated in several Abbreviated New Drug Application (ANDA) patent litigations, and advises clients about biogenerics/biosimilars issues.
Ed Walsh – Shareholder, Wolf Greenfield. Ed co-chairs the Wolf Greenfield Reexamination Practice Group. He also works with electrical and computer-related clients in IP strategy development and execution, including patent prosecution, clearances and counseling, IP portfolio management, litigation, licensing, consulting agreements, and joint development agreements. His areas of technical expertise include semiconductor processing and high-speed circuit design, wireless communication and signal processing, software, networks and network management, connectors and interconnection technology, and many types of test equipment.