Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination
New dates and locations coming soon.
Please note that the faculty members listed for this course are subject to change prior to the actual course date.
The instructors have extensive experience representing both patent owners and accused infringers in adverserial post-grant matters, particularly reexaminations. They have been actively involved in bar associations’ efforts to help the PTO design and implement the new review proceedings created by the America Invents Act (AIA). They have written widely on review, reexamination, and reissue topics for Intellectual Property Today.
Why Should You Take This Course?
The battleground of patent validity is shifting from courts to the PTO. Ten years ago courts were essentially the sole arbiters of patent validity. About 5-6 years ago, reexamination suddenly emerged as a popular means for challenging patents, either alone or alongside court battles. The reasons for that shift were simple: Would you rather bring your validity attack before an experienced patent examiner with technical expertise in the PTO’s Central Reexamination Unit where claims are given their broadest reasonable interpretation and do not enjoy a presumption of validity, or a jury in the Eastern District of Texas? The answer becomes all the more obvious when one considers that a reexamination can cancel claims, eliminate liability for past infringement, create intervening rights to continue accused infringement in the future, open up design-around opportunities, create a more favorable prosecution history, defeat a charge of willful infringement, help avoid an injunction, bolster an inequitable conduct defense, and sometimes enable a stay of expensive litigation. All of this can be achieved at a small fraction of the cost of litigation or advantageously deployed in conjunction with litigation.
The America Invents Act (AIA) shifted the balance even further in favor of the PTO as the patent validity battlefield of the future by creating new more powerful, fast-track, litigation-like review proceedings, including post-grant review and inter partes review. Inter partes review provides an opportunity to challenge the validity of a patent twice: first at the PTO based on printed publications and subsequently in litigation based on other available grounds. Stays are expected to be granted liberally when inter partes reviews are filed, given the statutory requirement for rapid completion of these new proceedings. As a result, validity challenges are likely to proceed in serial fashion. In the first phase of a bifurcated validity challenge, complicated arguments regarding the prior art can be rapidly resolved by trained specialists at the PTO, whereas in the second phase, less technical arguments regarding commercial activity or other invalidating grounds can be resolved by a judge or jury. This sequential system can simplify claim construction and narrow issues for an infringement portion of the litigation, and thus may reduce the overall costs. Lead counsel in an inter partes review proceeding must be a registered patent attorney, but it is possible for litigation counsel to participate in the proceeding even if the litigation counsel is not registered. Integrating the inter partes review and litigation teams can provide a smooth transition to the litigation upon completion of the review proceeding.
Reexamination has often been referred to as a second bite at the apple, but the bite size provided by inter partes review is more on par with that of litigation due to its provisions for limited discovery. The comparative weakness of ex parte reexamination is offset by its absence of estoppel implications. Indeed, the deepest concerns regarding inter partes review often focus on its legal estoppel provisions that prevent a challenger who is unsuccessful in an inter partes review from attacking a claim in any forum based on other printed prior art publications. This concern overlooks the advantages of this new proceeding and does not acknowledge that failure to invalidate a claim in litigation results in much harsher estoppel. The estoppel of inter partes review will have a considerably smaller scope than the estoppel of a failed district court challenge. In light of the complexity of many prior art arguments and the benefits of the serial validity and infringement cases, consideration of a challenge at the PTO should not be a back-up plan, as reexamination often is. Rather, inter partes review should be used prior to or concurrently with litigation.
Whatever side of the battle you are on, you must know how to engage in the new battlefields called review as well as the existing battlefield called reexamination.
This two-and-a-half-day course provides comprehensive training on indispensible tools for patent prosecutors and litigators, including new tools created by the AIA:
· Ex parte reexamination
· Inter partes reexamination
· Post-grant review (new under the AIA)
· Inter partes review (new under the AIA)
· Transitional program to review business method patents (new under the AIA)
· Supplemental examination (new under the AIA)
The course covers strategies, tactics, best practices and case studies for reexamination and reissue. In addition, the course will cover the statutory and regulatory framework for the AIA’s new review proceedings and supplemental examination, as well as lessons from early proceedings. The course is for both patent practitioners who appear before the PTO in these proceedings, as well as litigators who must deal with the increasingly common role of PTO proceedings in the context of disputes.
For patent challengers, the course provides training to:
· Analyze the benefits and disadvantages of reexamination and review as compared to litigation
· Make well-informed choices between all types ofreexamination and review proceedings
· Understand the critical role of reexamination and review in the context of a dispute and develop reexamination and/or review strategies based on anticipated or concurrent litigation
· Appreciate estoppel implications – both official and unofficial – of reexamination and review
· Utilize reexamination and review to obtain a stay or other benefits in related litigation
· Unravel the AIA’s review statutes and decipher the PTO’s review rules to really understand how reviews are conducted
· Prepare a request for reexamination or petition for review that complies with all requirements and gets granted
· Learn what the reexamination statistics really mean
· Advantageously utilize the different standards applied for claim interpretation at the PTO and claim construction in litigation as well as the differing burdens of proof
· Recognize possible changes to the construction of the claims in the litigation based on the reexamination or review that opens up design-around opportunities, creates a more favorable prosecution history for the purpose of claim construction, or impacts estoppel theories
· Create intervening rights that eliminate liability for past infringement or allow continuation of accused infringement in the future
· Tactically use serial ex parte reexamination requests and protests in reissue
· Correctly and strategically use petitions and declarations
· Understand the repercussions that reexamination and review can have on settlement
The course balances the perspectives of patent challengers and patent owners so the above items are also presented from the view of the patent owner. Additionally, the course provides training for patent owners to:
· Choose between ex parte reexamination, reissue and supplemental examination to immunize a patent from a third-party attack
· Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims – or from mere argument regarding claim scope
· Defensively utilize related proceedings, reissue continuations and merger to maximize flexibility and advantage
· Select information to be disclosed to the PTO from concurrent litigation or other PTO proceedings
· Understand the timing of events in all post-issuance PTO proceedings so that you are not caught off guard
· Navigate the maze of reexamination and reissue procedures to avoid unfortunately common mistakes
· Master the recapture rule in reissue applications
· Understand when and how to utilize a certificate of correction or disclaimer, rather than reexamination, reissue or supplemental examination
Many other topics related to post-grant PTO proceedings are covered in the course. Legal ethics in the context of reexamination and reissue prosecution will be presented near the end of the second day, as currently estimated.