Challenging Pending Patent Applications: When, Where, and What Type
Navigating Third-Party Submissions, Protests, and Derivation Proceedings for Pre-Grant Applications
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Monday, November 13, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will examine challenging U.S. patent applications pre-grant and the factors to consider when deciding whether to challenge. The panel will discuss pre-issuance submissions of the relevant prior art, protests, and derivation proceedings, as well as the risks and ramifications of challenging pending patent applications.
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
Mr. Totten focuses his practice on patent and trade secret litigation, post-grant validity challenges, and client counseling in the mechanical and electrical fields. He has extensive experience managing litigation teams involved in complex intellectual property disputes, developing and briefing claim construction and summary judgment positions. His litigation practice includes representing clients in post-grant review (PGR) proceedings. His work includes coordinating PTAB proceedings and ongoing district court litigation.
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations.
When attacking the patentability of a pending U.S. patent application, challengers should have a strategy for the timing and potential ramifications of the action.
In a pending U.S. application, any third party may make a pre-issuance submission of "any patent, published patent application, or other printed publication." While both pre-issuance submissions and protests permit a challenge to disclosure, novelty, and nonobviousness, they are governed by different rules, which may impact the decision about which path, if any, to take. For example, protests, unlike pre-issuance submissions, can be based on "any facts or information adverse to patentability" and are not restricted to challenges based on patents, published applications, or printed publications. So protests can raise issues under Sec. 112 (a) and/or (b).
Derivation proceedings were introduced with the American Invents Act (AIA) in 2012, but so far only one derivation proceeding has gone all the way through to a decision on the merits. The panel will discuss this decision and lessons it offers for practitioners considering a derivation proceeding.
Counsel must consider when to file, what tools to use for challenging a pending U.S. patent application, and the potential downstream risks and ramifications. There may also be considerations around which patent application(s) in a portfolio of a third party provide the most suitable target(s).
Listen as our authoritative panel of patent attorneys examines the factors patent counsel and their clients should weigh when determining when, where, and what type of submission to use. The panel will discuss pre-issuance submissions of relevant prior art, protests, and derivation proceedings, as well as offer guidance on challenging pre-grant patent applications.
- Timing
- Types of challenges
- Preissuance submissions of relevant prior art, 35 U.S.C. 122(e) as amended by AIA Sec. 8
- Challenge based on the derived invention
- Protests under 37 C.F.R. 1.294
- Third-party strategies for inducing an applicant to disclose information
- Considerations when determining patent validity
The panel will review these and other important issues:
- What is the basis of the challenge to the pending application? What role does this have in determining the path of the pre-grant challenge?
- What are the potential risks involved in challenging a pending patent application?
- What factors should counsel consider when determining when to challenge a pending application?
- As a third party, how can you, and should you, put an onus on the patent applicant to disclose?
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