12:00 – 12:30 pm PST – Registration and lunch
12:30 – 2:00 pm PST – Roundtable discussion
Join us for an interactive session with Bernard Knight, the United States Patent and Trademark Office (USPTO) general counsel from 2010 to 2013, who led the legal development and review of the regulations implementing the new inter partes review:
Why is inter partes review an effective strategy either in parallel with or as an alternative to traditional litigation?
What are the important and practical tips for inter partes review proceedings including:
- Effective challenges
- Insight to new system
- Limiting cost/disruption to your day-to-day business
The America Invents Act (AIA) provides several new avenues to challenge the validity of patents. These new proceedings are a necessary part of any litigation strategy. Recent statistics reveal that approximately 80 percent of patents involved in inter partes review and 100 percent of patents involved in covered business method proceedings are involved in concurrent litigation. The regulations issued by the USPTO implementing these new proceedings are voluminous and a good understanding of the USPTO’s views regarding these provisions will provide in-house counsel with a strong advantage over their adversaries. These new proceedings have been wildly popular as a valuable litigation tool, with filings exceeding even the USPTO’s own expectations.
Our roundtable will offer an insider’s view of these new proceedings from former USPTO General Counsel Bernard Knight. Bernard is among the most respected authorities on intellectual property law in the United States. At the USPTO, he led the development and legal review of the regulations implementing the new inter partes review, post grant review, business method review and derivation proceedings, as well as the regulations changing the United States to a first-inventor-to-file system. As such, Bernard is perfectly positioned to provide insightful advice and guidance based on his intimate familiarity with the AIA. His talk will include checklists for petitioners who file petitions as well as patent owners who need to be prepared to defend their patents in these new proceedings.
Bernard Knight, Partner
Mark J. Itri, Partner and Head of IP Prosecution, Transactions & Strategy Practice Group
For more information, please contact Tricia Wyse.
CLE credit is pending in California, Illinois, New York and Texas. A Uniform Certificate of Attendance will be made available to participants requesting CLE credit in all other states.
McDermott Will & Emery's Intellectual Property Roundtables are designed for the educational benefit of a company president, CEO, general counsel or other executive with an interest in intellectual property. Please be advised McDermott has the right to restrict attendance and may limit participation in this event.