Seminar April 22, 2015

U.S. Intellectual Property Law - IPR Best Practices, Protection of Software, Prosecuting Patents under the AIA

Event Detail
Hidetada James Abe
April 22, 2015
James Abe and Rachel Capoccia participated in this recent conference hosted by AIPPI.

James was a featured speaker during the following sessions:

"Preparing and Prosecuting a Successful IPR and Prosecuting a Patent that Will Survive an IPR" - The America Invents Act (AIA) implemented several new patent office proceedings, such as the Inter Partes Review (IPR) and Covered Business Method Review (CBM). These proceedings are becoming increasingly used by parties accused of infringement, particularly in view of the relatively high invalidation rate and the lower costs compared to federal court litigation. In this session, panelists covered considerations for petitioners seeking to invalidate patents, including how to successfully prepare a petition and manage an IPR proceeding. Panelists also covered considerations for patent owners, including how to prosecute patents and build a patent portfolio that will survive an IPR challenge by a competitor or a potential infringer. 

"Declarations in First-to-File Applications to Overcome Prior Art" - The AIA also implemented the First-to-File system, which applies to applications with an effective filing date of March 16, 2013, or later. Although the change has put U.S. patent law in closer comport with other patent systems, U.S. patent law still allows for a limited grace period even under the First-to-File system. In this session, participants covered the rules and tips on overcoming prior art rejections by submitting declarations that invoke the grace period exceptions. Panelists also covered several examples to illustrate the different scenarios that may or may not implicate the grace period exceptions. 

Rachel was a featured speaker during the session "Intellectual Property Protection for Software in the U.S. in the Wake of Alice v. CLS Bank and Oracle v. Google." Last year, the U.S. Supreme Court decided the case Alice v. CLS Bank, which has significantly affected the landscape for patent rights covering software technology. This year, the U.S. Supreme Court may hear the case Oracle v. Google, which broadened copyright protection for software. In this session, panelists covered the impact of these and related cases on IP protection of software technology. Panelists also compared and contrasted the two different IP protection frameworks and covered considerations for companies that produce software or frequently use software as part of their business.

April 22, 2015
Meet The Speakers
Media Contacts
Nicholas Clarke
Senior Communications Manager
Phone: 212.210.1222

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