Track H

H7 University Patents in the Bullseye as Targets for Post-grant Challenges in the U.S. and EP *CLE Eligible

Track: IP Trends and Successful Practices

Target Audience: Intermediate

Felicia Metz, University of Maryland

Richard Giunta,Wolf Greenfield
Steve Kazmierski, Stinson Leonard Street LLP
Maura O'Connell, FRKelly
Neil Veloso, Johns Hopkins Technology Ventures

The America Invents Act created a new process for challenging the validity of a patent after grant. Similarly Europe has the Opposition Proceeding. Post-grant challenges in the form of Inter Partes Review (IPR), Covered Business Methods and Post-Grant Review (PGR) have created a firestorm of patent validity challenges at the United States Patent and Trade Office (USPTO) while Opposition Proceedings can narrow the scope of claims or result in the entire loss of rights. University patents are not immune to post-grant challenges and offices need to prepare in order to maintain patent rights. Every aspect of your patent protection and licensing strategy has the potential to be touched by a post-grant challenge. Preparing, budgeting and insulating may require setting aside part of your total patent budget to defend (or petition for) a potential challenge. It may also require evaluating your license agreements as well as your patent preparation and prosecution strategy. All these areas will be discussed in detail. Plus, you will also learn survival tactics should you find yourself in a post-grant challenge. The purpose of this session is to identify university-specific issues that arise with post-grant challenges and provide tips to better prepare for its inevitability.

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