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America Invents Act Web Series

Web Series Part I

USPTO Implementation of the America Invents Act
October 27, 2011

On September 16, 2011, the America Invents Act (AIA) was signed into law and introduced substantial changes to the United States patent laws.  Over the next 18 months, various provisions of the AIA will go into effect requiring patent practitioners, applicants, and patentees to revise their practices and strategies for patent preparation, prosecution, protection and enforcement.  Join Janet Gongola, Patent Reform Coordinator for the U.S. Patent & Trademark Office (USPTO), who will provide insight into the USPTO’s implementation of the AIA, discuss the impact the AIA will have on patent examination, post-issuance matters, and the USPTO’s fee and budgetary issues, and highlight the anticipated challenges for implementing the AIA in the USPTO.
Janet Gongola, Patent Reform Coordinator, USPTO

Web Series Part II

Pre-Grant Procedures for Patent Practitioners Under the America Invents Act: Filing and Prosecuting Patent Applications

December 15, 2011



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Course Description:
Congress designed the America Invents Act (AIA) to enhance opportunities for innovation and entrepreneurial investment, to better harmonize U.S. patent laws with those of other countries, and to streamline patent office procedures.   From now until March of 2013, the U.S. patent laws will drastically change, which will require patent practitioners, inventors, and businesses to reconsider their patent practices and strategies.  AIPLA continues its webinar series on the AIA with Charles Van Horn of Finnegan Henderson, who will provide practice tips and strategies for the preparation, prosecution, and enforcement of patents under the AIA.  The topics of discussion will include, for example, the first inventor-to-file system, new definitions of prior art,  derivation proceedings, the Patent Trial and Appeal Board, pre-issuance submissions, best mode requirements, and priority examination, just to name a few. 


Charles E. Van Horn, Finnegan Henderson, Farabow, Garrett & Dunner, LLP

Web Series Part III

Post-Issuance Activities and Enforcement of Patents Under the America Invents Act

January 12, 2012



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Course Description:

The CLE seminar examines the new post-grant mechanisms of the America Invents Act (AIA) including Post Grant Review, Inter Partes Review, Supplemental Examination, and Transitional Program for Covered Business Method Patents. The operation and implementation of these new mechanisms will be explained, as well as the application of these new post grant USPTO proceedings to existing and future patent litigation strategies.

The AIA significantly overhauls and expands post-grant patent practice before the USPTO. Changes include:
- Creation of the new, Patent Trial and Appeal Board (PTAB)
- Introduction of a new, fast-track, post-grant mechanisms for third party challengers
- Overhaul of current patent reexamination practices
- Implementation of collateral estoppel provisions for ITC actions/modifies District Court estoppel provisions
- In some instances, automatic stays of parallel District Court litigation
- Establishment of a special review proceedings for business method patents
- Creation of a supplemental examination provision for patent owners


Scott McKeown, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.

Web Series Part IV

Effects of the America Invents Act on Valuation, Licensing & Acquisitions
February 15, 2012


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Course Description:

With the passage of the America Invents Act, the Act’s supporters have predicted that reforming the patent system for the first time in nearly 60 years would result in an increase in jobs and promotion of innovation. Jeff and Michael will explore how the numerous changes to the patent system might affect valuation of patents.  Armed with this information, they will then look at the various risks the new legislation provides in licensing and acquisition of patents, and they will provide ways to address the various risks from the licensor/licensee and buyer/seller perspectives.

Jeffrey Whittle, Bracewell & Giuliani
Michael Samardzija, Bracewell & Giuliani LLP

Web Series Part V

Day One Challenges: Oath & Declaration, PCT filings, and more... Practitioner Practice Tips
September 12, 2012


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Course Description:

Beginning on September 16, 2012, the most dramatic impact of AIA will take place affecting our daily patent practice in the US.  You will not be able to file an application in the USPTO unless you are familiar with the new Rules on Oath and Declaration.  Certain cases will require a new declaration and will be rejected if you use the old declaration.  Certain cases will require the old declaration and will be rejected if you use the new declaration.  ADS are mandatory for certain information.  Inventors are no longer automatically applicants.  PCT Request Forms have to be filled out differently.  Making changes to inventorship are completely revised.  Forms are different, timing is different, and just about everything about filing an application in the USPTO has changed. 

More than any other part of the AIA, the Rules relating to Oath and Declaration will impact our daily patent activities more than any other change up to now.  Some of these changes affect the legal aspects, some affect paralegal activities, some affect docketing, and it impacts both domestic and international aspects of your practice.

Without being fully familiar with all of these changes, it will be almost impossible to file a patent application in the USPTO after September 16, 2012.  This AIPLA Webinar will provide all of the information you need to continue your patent operation flowing smoothly, seamlessly, and enable you to address all of your client’s filing requests in the USPTO.

Samson Helfgott,
KattenMuchinRosenman LLP
Carl Oppedahl, Oppedahl Patent Law Firm LLC

Web Series Part VI

Post-Grant Proceedings Under the AIA: What You Need to Know Today
October 15, 2012


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Course Description:

As of September 16, 2012, Inter Partes Review and Review Under the Transitional Program for Covered Business Method Patents are now available, and the first petitons for IPR and CBM have been filed and are pending before the Patent Trial and Appeal Board. Please join us for an overview of what you need to know as you consider utilizing these administrative trial proceedings, perhaps as an alternative to district court litigation. Our presenters will discuss the framework for IPR and CBM proceedings, the final rules implementing the proceedings, and strategic considerations from a petitioner's and a patent owner's perspective.

Denise DeFranco,
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Sharon Israel, Mayer Brown LLP

Please contact AIPLA with any questions. (703) 412-1302.