Track G

G9 Managing of Post Issuance Patent Proceedings

Track: IP Trends and Successful Practices

Target Audience: Advanced

Michael Goldman, J.D., LeClairRyan

Abram Goldfinger, M.B.A., New York University
J. Dana Hubbard, J.D., EMD Millipore Corporation

One of your scientists has developed technology which is both clinically important and commercially exciting. You have negotiated a deal to exclusively license your recently issued U.S. patent to one of several competing companies. You have just received notice of a petition for inter parties review of your patent in the U.S. filed by a company who wanted but did not receive the license.  What do you do now?
The America Invents Act revamped the post-issuance procedures for challenging patents in the United States Patent and Trademark Office.  While many entities view these procedures as viable, cost-effective alternatives to district litigation for challenging patent validity, many universities view these procedures with angst, because they are costly, may result in an unpatentability ruling, and have the potential to encumber licensing opportunities.
This presentation will discuss the post-issuance procedures that are available to patent challengers within the United States, including an overview of how entities are using these procedures. A panel discussion will address tactics for insulating your patents from these procedures, as well as strategies for defending your patents if they do become a target. The panel will provide perspectives and examples from university technology transfer professionals, industry professionals and U.S. intellectual property counsel.

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