Post-Grant Procedures at the USPTO
How to Coordinate Oppositions in the US and Europe
- Invalidating third party patents: inter partes review, postgrant review, reexamination and more
- Correcting errors in own patents: reissue
- US & Europe: patent post-grant strategies
- Best practices for exploiting the procedures and the recent changes
- How to prepare as a defendant before the PTAB
- Case studies: coordinated procedures before EPO & USPTO
Aims and objectivesSince many inventions are protected by closely related patents in Europe and the US, and the Patent Trial and Appeal Board (PTAB) is a favourable jurisdiction for challengers, with over 1,500 petitions a year, there is a need to coordinate post-grant procedures before the EPO and the USPTO.
The US Supreme Court decisions 'Oil States' and 'SAS' have a significant impact on the PTAB procedures. Attendees will learn more about the amended post-grant procedures as inter partes review, post-grant review and further ones in comparison with EPO proceedings. Discuss strategies and best practices for exploiting the new procedures and defending your IP before the PTAB. You will learn how to navigate timing, grounds for opposition, discovery and amendments to maximise protection in Europe and the US.
- Key similarities: petitioner, oral argument, challenger win rate
- Key differences: grounds, anonymity, discovery, use of expert testimony, attorney-client privilege, filing fees, litigation estoppel
- Use of Reissue in the US to straighten your patent
- Reexamination: which patents, parties, grounds, timeline
- Inter Partes Review: which patents, parties, grounds, timeline
- Post-Grant Review: which patents, parties, grounds, timeline
- Transitional Program for Covered Business Methods Patents: which patents, parties, grounds, timeline
- Impact of differences relating to discovery and the use of expert testimony
- Changes brought by the future Unified Patent Court
- How to maintain consistent positions while leveraging the procedures in each jurisdiction to maximize protection
- Best Prosecution Strategies
- How to draft and to implement a successful defense
- Taking in consideration different timelines for Europe and the US
- Real-life examples
- Learn how to use the actions in one jurisdiction to help in the other
Anthony is the Managing Partner of Finnegan's European office in London, UK. He practices all aspects of intellectual property law, from strategic patent portfolio management to litigation with a focus on post-grant proceedings, appeals and oral hearings at the USPTO's Patent Trial and Appeal Board, as well as EPO opposition and appeal procedures. He has significant knowledge about the EPC and the diversity of laws and practice among the European national systems. His knowledge of the European legal system and how it differs from the US allows Anthony to effectively counsel both European and US clients with global interests in intellectual property.
Dr. Wichmann is a German and European patent attorney with more than 20 years expertise in the field of IP law. He is a partner at Wuesthoff & Wuesthoff in Munich and is president of the committee for biotechnology at the German chamber of patent attorneys. He has intensively dealt with the EPO opposition proceedings, together with further aspects of European patent law, in numerous presentations and publications.
Phone: + 49 89 1590610
Catharina Stenholm, IPR Counselor,
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