Tech Transfer Central

New Post Grant Proceeding Rules: Adjusting to the New Reality

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: September 19, 2012

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The America Invents Act (AIA) brought significant changes to post-grant proceedings — the formal processes by which you can challenge a competitor’s patent, or strengthen a patent already granted.  These changes are still being interpreted in USPTO proposed implementing rules — many of which continue to create confusion, debate, and new threats to your IP. Nevertheless, the law is set to take effect on September 16th, and it’s critical for you and your staff to be prepared for these new forms of patent challenges — and to respond effectively so your valuable IP doesn’t get caught up in the complex new procedures.

That’s why Technology Transfer Tactics has partnered with two prominent attorneys — one with a robust patent practice and one with front-line experience in a top-tier the technology transfer office — to help make sure you’re ready as implementation kicks in.

Please join Charley Macedo (Amster, Rothstein & Ebenstein LLP) and Randi Isaacs (Emory University) for this critical program:

 New Post Grant Proceeding Rules:
Adjusting to the New Reality

Our panelists will dissect the new rules and educate you on how to best adjust to these changes, while understanding how they will specifically affect university procedures and patent protection strategies. They’ll cover:

  • The latest on USPTO implementing rules
  • Post Grant Review
  • Inter-partes review
  • Ex-parte reexamination
  • Patent reissue and supplemental proceedings
  • Third party submissions:
    • continuing confusion over prior art exceptions, grace period
    • procedures
    • oppositions
    • TTO response
  • Validity challenges
  • And more!

Your Expert Panelists:

Randi Isaacs is In-House Patent Counsel for Emory University’s Office of Technology Transfer. She is a registered patent attorney with the US Patent and Trademark Office and a member of the Virginia State Bar. Prior to joining Emory, she spent six years working with Intellectual Property boutique firms in the Washington DC metro area. During her years at Oliff & Berridge, PLC, and Plumsea Law Group, LLC, Randi focused on patent prosecution and intellectual property counseling.

Charles R. Macedo is a Partner with the intellectual property law firm Amster, Rothstein and Ebenstein, LLP of New York. Mr. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. Mr. Macedo is the author of The Corporate Insider’s Guide to U.S. Patent Practice, being published by Oxford University Press, and received the prestigious AIPLA Robert C. Watson Award for his analysis of the First to File System vs. First to Invent System.

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