What You Need to Know about Patent Law Practice After the AIA

March 22, 2013

The America Invents Act (AIA) is the most sweeping change to U.S. patent law in the last half century. Key aspects became effective when the AIA was signed into law in 2011. The critical transformation from “first-to-invent” to “first-inventor-to-file” is effective March 16, 2013.

The conference will provide attendees with a thorough understanding and critical insights into:

  • The evolution of the AIA legislation
  • U.S. Patent and Trademark Office (USPTO) rules implementing “first-inventor-to-file,” post-issuance patent challenges, and other key AIA provisions
  • Practical considerations in patent prosecution, transactions/due diligence, and intellectual property and patent litigation

The conference will be led by expert speakers including the Chief Administrative Patent Judge of the USPTO’s Patent Trial and Appeal Board, the Director of the USPTO’s Office of Patent Legal Administration, the former counsel to the Senate Judiciary Committee and a principal architect of the AIA, and leading patent prosecutors and litigators.

Attend and Learn

  • Gain insights into the congressional history of the AIA and its implementation by the USPTO
  • How to apply key AIA provisions and USPTO rules
  • Strategies for challenging patents before the USPTO and in the courts
  • What are the perspectives of leading USPTO officials and expert patent lawyers

Who Should Attend

Anyone involved in managing work pertaining to obtaining and enforcing patent rights, including patent prosecutors and litigators in private practice or in-house at corporations or universities.

Schedule / Agenda

9:00am Welcome and Introductions
Professor Andrew Beckerman-Rodau
Co-Director IP Law Concentration, Suffolk University Law School 
 
 9:10am Legislative History of the America Invents Act
Joe Matal, Esq.
 
 9:30am - 12:00pm Patent Applications
  • 9:30am Preissuance Submissions by Third Parties
    Panel: Brian Hanlon, Esq. and Andrea Robidoux, Esq.
  • 9:50am Derivation Proceedings
    Panel: Administrative Patent Judge Thomas L. Giannetti and Mary K. Murray, Esq.
  • 10:30am Q & A
  • 10:45am Networking Break
  • 11:00am Requirements for Novelty and Requirements for Nonobviousness
    Panel: Administrative Patent Judge Thomas L. Giannetti and Mary K. Murray, Esq.
 12:00pm  Lunch (on your own)
 
 1:00pm

 Review of Issued Patents

  • Supplemental Examination by the Patent Owner
  • Inter Partes Review
  • Post-Grant Review and Transitional Program for Covered Business Methods Review

Moderator: Mary K. Murray, Esq.
Panelists: Administrative Patent Judge Thomas L. Giannetti, Brian Hanlon, Esq., Brian A. Fairchild, Esq.
Commentators: Joe Matal, Sarah Columbia, Jason Honeyman and Frank Porcelli
 

 2:30pm

Panel Discussion and Q & A
 

 2:45pm Networking Break
 
 3:00pm

Defending and Enforcing Patents

Strategies and Tactics in View of Inter Partes Review, Post-grant Review, Transitional Program for Covered Business Methods

  • Advice of counsel
  • Novelty of obviousness challenges

Moderator: Mary K. Murray, Esq.
Panelists: Sarah C. Columbia, Esq., Jason Honeyman, Esq., Frank Porcelli, Esq.
Commentator: Joe Matal, Esq.
 

 4:45pm Panel Discussion and Q & A
 
 5:00pm Conclude
 

View the full event brochure. 

About

March 22, 2013

The America Invents Act (AIA) is the most sweeping change to U.S. patent law in the last half century. Key aspects became effective when the AIA was signed into law in 2011. The critical transformation from “first-to-invent” to “first-inventor-to-file” is effective March 16, 2013.

The conference will provide attendees with a thorough understanding and critical insights into:

  • The evolution of the AIA legislation
  • U.S. Patent and Trademark Office (USPTO) rules implementing “first-inventor-to-file,” post-issuance patent challenges, and other key AIA provisions
  • Practical considerations in patent prosecution, transactions/due diligence, and intellectual property and patent litigation

The conference will be led by expert speakers including the Chief Administrative Patent Judge of the USPTO’s Patent Trial and Appeal Board, the Director of the USPTO’s Office of Patent Legal Administration, the former counsel to the Senate Judiciary Committee and a principal architect of the AIA, and leading patent prosecutors and litigators.

Attend and Learn

  • Gain insights into the congressional history of the AIA and its implementation by the USPTO
  • How to apply key AIA provisions and USPTO rules
  • Strategies for challenging patents before the USPTO and in the courts
  • What are the perspectives of leading USPTO officials and expert patent lawyers

Who Should Attend

Anyone involved in managing work pertaining to obtaining and enforcing patent rights, including patent prosecutors and litigators in private practice or in-house at corporations or universities.

Schedule / Agenda

9:00am Welcome and Introductions
Professor Andrew Beckerman-Rodau
Co-Director IP Law Concentration, Suffolk University Law School 
 
 9:10am Legislative History of the America Invents Act
Joe Matal, Esq.
 
 9:30am - 12:00pm Patent Applications
  • 9:30am Preissuance Submissions by Third Parties
    Panel: Brian Hanlon, Esq. and Andrea Robidoux, Esq.
  • 9:50am Derivation Proceedings
    Panel: Administrative Patent Judge Thomas L. Giannetti and Mary K. Murray, Esq.
  • 10:30am Q & A
  • 10:45am Networking Break
  • 11:00am Requirements for Novelty and Requirements for Nonobviousness
    Panel: Administrative Patent Judge Thomas L. Giannetti and Mary K. Murray, Esq.
 12:00pm  Lunch (on your own)
 
 1:00pm

 Review of Issued Patents

  • Supplemental Examination by the Patent Owner
  • Inter Partes Review
  • Post-Grant Review and Transitional Program for Covered Business Methods Review

Moderator: Mary K. Murray, Esq.
Panelists: Administrative Patent Judge Thomas L. Giannetti, Brian Hanlon, Esq., Brian A. Fairchild, Esq.
Commentators: Joe Matal, Sarah Columbia, Jason Honeyman and Frank Porcelli
 

 2:30pm

Panel Discussion and Q & A
 

 2:45pm Networking Break
 
 3:00pm

Defending and Enforcing Patents

Strategies and Tactics in View of Inter Partes Review, Post-grant Review, Transitional Program for Covered Business Methods

  • Advice of counsel
  • Novelty of obviousness challenges

Moderator: Mary K. Murray, Esq.
Panelists: Sarah C. Columbia, Esq., Jason Honeyman, Esq., Frank Porcelli, Esq.
Commentator: Joe Matal, Esq.
 

 4:45pm Panel Discussion and Q & A
 
 5:00pm Conclude
 

View the full event brochure. 

Back to the Top