Patent Valuation in the Wake of the America Invents Act




About the Course:

This webinar provides insight into how the America Invents Act may impact patent valuation. The Post-Grant Review process, first to file and expanded user rights are explored in great detail. The nuances of changing standards for establishing claim invalidity; broader standards for claim interpretation; cost and speed of invalidity proceedings; and, estoppel issues are examined.

The following are among the issues discussed during the webinar:

  • Who may file a Post-Grant Review petition? What is the deadline for filing such petitions?
  • Is it possible to receive Protective Orders under Post-Grant Review?
  • May the patent owner amend any claims during Post-Grant Review?
  • Can one challenge a patent under Post-Grant Review if a remedy is initially sought in Federal Court?
  • To what extent does Post-Grant Review restrict the challenger’s future litigation efforts?
  • What are the merits of a presumed licensee triggering a Post-Grant Review of patents it intends to license in?
  • What are the limitations on grounds for pursuing an Inter Partes Review?
  • When does the window of opportunity close for filing an Inter Partes Review?
  • Where do the limitations on requesting Covered Business Methods proceedings lie?
  • How are an inventor’s rights to market his invention impacted by First to File?
  • What is the time limitation placed on Expanded Prior User Rights?
  • What are some of the other restrictions placed on Expanded Prior User Rights?

Course Leader: J. Eric Sumner, Associate, Fox Rothschild LLP Eric is a member of the firm’s Intellectual Property Practice, representing clients that vary in size from small start-ups to Fortune 100 corporations. His practice focuses on all fields of intellectual property law, with a particular emphasis on worldwide acquisition and enforcement of patents in the pharmaceutical, biotechnology and chemical arts.

Eric has extensive experience in the preparation and prosecution of patent applications, as well as worldwide patent portfolio management. He routinely counsels clients on patentability, infringement, patent validity and freedom-to-operate considerations and conducts intellectual property due diligence reviews related to the acquisition or licensing of proprietary technologies.

Course Length: Approx. 1.0 hours

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