Broadcast Date: Wednesday, October 14, 2020
from 3:00 pm to 4:00 pm (ET)

Overview:

Overview:

The US Patent & Trademark Office’s (USPTO’s) Inter Partes Reviews (IPR) and Post-Grant Reviews (PGR) proceedings continue to provide patent challengers with a faster and cheaper way to invalidate patents. Thus, patent challengers have made USPTO a forum of choice in disputing patent enforceability and validity.

Whether an attorney is defending or challenging patents, effective use of AIA trial proceedings is essential to ensure favorable results for clients.

In this LIVE Webcast, a seasoned panel of thought leaders and professionals assembled by The Knowledge Group will provide the audience with winning IPR and PGR strategies. Speakers will also offer an in-depth analysis of recent legal developments that affect how attorneys approach IPR and PGR proceedings.

Key topics include:

  • Current Legal Developments for IPRs and PGRs
    • Institution
    • Printed Publications and Proof Issues
    • 112 Issues
    • 101 Issues for Amended Claims
    • Stays of Related Litigation
    • Appealability
    • Constitutionality of APJs
  • Pilot Motion to Amend Program
  • Prosecution Tips in View of IPRs and PGRs
  • Strategy Considerations
  • Fee Update
  • Outlook

Credit:

Course Level:

Intermediate

 

Advance Preparation:

Print and review course materials

 

Method of Presentation:

On-demand Webcast (CLE)

 

Prerequisite:

General knowledge of patent laws

 

Course Code:

149002

 

NY Category of CLE Credit:

Areas of Professional Practice

 

Total Credit:

1.0 CLE

Speaker Panel:

Roger H. Lee, Shareholder
Buchanan Ingersoll & Rooney

Roger H. Lee focuses his practice on intellectual property law, with an emphasis on inter partes matters before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. He has extensive experience before the PTAB and has successfully represented petitioners and patent owners in inter partes review (IPR) proceedings.

Roger provides strategic counseling and opinions concerning validity, infringement, and freedom to operate. He helps clients navigate complex disputes involving multiple patents and parallel proceedings. He has conducted appeals before the Court of Appeals for the Federal Circuit.

Roger has extensive experience preparing and prosecuting patent applications and managing patent portfolios. He is experienced in all phases of patent prosecution, from drafting applications to conducting appeals. He has obtained numerous patents for clients in the chemical, pharmaceutical, biotechnology, mechanical, and electrical fields.

Erin M. Dunston, Partner
Panitch Schwarze Belisario & Nadel LLP

Over the course of her nearly twenty-year career, Erin M. Dunston’s practice has been a purposeful mix of patent prosecution and litigation.  With a background in biochemistry, she concentrates her practice primarily in the fields of biotechnology, pharmaceuticals, medical devices, and associated computer technology.  To date, Erin has handled more than 20 district court litigations and more than 25 inter partes reviews (IPRs) and more than 40 interferences before the Patent Trial and Appeal Board (P.T.A.B).  Assisting both patent owners and putative infringers/petitioners, this experience ranges from pre-filing analyses all the way through appeals to the U.S. Court of Appeals for the Federal Circuit.

Agenda:

Roger H. LeeShareholder

Buchanan Ingersoll & Rooney

AND

Erin M. DunstonPartner

Panitch Schwarze Belisario & Nadel LLP

  • Key developments and notable recent cases
    • Discretion to institute, 314a, and 325d
    • Printed publication proof issues
    • 112 issues in IPRs
    • 101 considered with amended claims
    • Stays in view of related litigation
    • Appealability of institution decisions (Thryv)
    • Constitutionality of APJ appointments (Arthrex)
  • Strategies for remote final hearings and Attributes of Winning Arguments
  • Prosecution tips in view of IPRs and PGRs
  • Pilot Motion to Amend Program and Strategy Considerations
    • Increased importance in view of CAFC decision regarding 101 consideration
    • Thoughts on the few cases where it’s been used
  • Affirmance/Reversal rate at the CAFC and Related Issues
    • Figures/timing
    • Waiver
    • Trends in remands
  • Fee updates to be aware of

Date & Time:

Wednesday, October 14, 2020

3:00 pm to 4:00 pm (ET)

Who Should Attend:

  • Patent Attorneys and Consultants
  • Patent Agents
  • Intellectual Property Lawyers and Consultants
  • Patentees
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SPEAKERS

Roger H. LeeShareholder
Buchanan Ingersoll & Rooney
Erin M. DunstonPartner
Panitch Schwarze Belisario & Nadel LLP

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