UCL Institute of Brand and Innovation Law (IBIL) Masterclass

The Real, Dramatic and Ongoing Changes to United States Patent Law and their Impact on the Practice of Patent Law

Speaker:
Professor Dennis Crouch,
University of Missouri and Author of the Patently-O Patent Law Blog

Chair:
The Rt Hon Prof. Sir Robin Jacob
Sir Hugh Laddie Professor of IP Law, UCL Faculty of Laws

The Course Dates

Monday 18 June - 6-8pm
Changes in the Way Patents are Prosecuted in the US

Thursday 28 June - 6-8pm
US Patent Litigation Structure and Changes to the Process

Wednesday 4 July: 6-8pm
Litigation, Administrative Style; Subject Matter Eligibility

This course is accredited with 6 CPD hours by the Solicitors Regulation Authority, Bar Standard Board and is relevant CPD for IPReg.


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About the course:
The U.S. Patent system is in the midst of major changes. In late 2011, President Barack Obama enacted the Leahy-Smith America Invents Act (AIA) – legislation that has rightfully been identified as the greatest single modification to the U.S. patent system since the modern Patent Act was signed into law in 1952. Some provisions in the new law have already become effective, others will take effect in the coming months, and the full impact of the reforms may not be known for years to come. Meanwhile courts have also been shaping the law. Over the past year, the US Supreme Court and the Court of Appeals for the Federal Circuit (CAFC) have collectively issued hundreds of precedential decisions covering virtually every aspect of patent law. Meanwhile, the US Patent Office continues to modify its processes and structure its newfound power under the AIA.This course will address these recent major events and their impact on procurement, litigation, and monetization of patent rights. In parallel, we will highlight practical empirical results that suggest “evidence based strategies” for addressing specific client concerns.

The Seminars:

• Setting the Stage: Market for Patents; Political Motivations for Continued Reforms; and Traditional US Prosecution Pathways, Including the Growing Role of Provisional, PCT, and Continuation Applications.
• The New First-Inventor-to-File-Regime; The Timeline for Implementation and Preemptive Steps that Should be Taken Now; and a Comparison of the AIA with European patent standards.
• The Legislated Goal of International Harmonization and how it Likely Compels US Courts to Consider the Laws of Other Nations when Interpreting the AIA.
• Inequitable Conduct; Its Limited Value as a Defense; and Prospects for Cure through the new Supplemental Examination Procedures.
• Prosecution Fees; Their Price Elasticity and What that Means for Patent Attorneys.

• The US Patent Litigation Process and new global litigation strategies.
• The Cost of Discovery and New Patent-Law-Specific Discovery Limits.
• Forum Shopping; The Surprising Impact of the New Joinder Rules in Altering the Intra-US Calculus; The Growing Role of International Foreign Shopping; and Patent Free Zones.
• Getting to the Point in Understanding the Value of US Patents being Litigated; Revisions to the Law of Patent Damages; and Revisiting Injunctive Relief in Courts and the International Trade Commission.
• The Real Point: Settling, Mediating, Arbitrating, Licensing, and Otherwise Monetizing.
  
  

• Understanding Post Grant Review Proceedings; Deference to USPTO Decision Making; Dealing with the Estoppel Issue; and a Comparison with European and UK Post-Grant Options.
• Costs and the Potential Value in Pre-Grant Third-Party Submissions.
• Subject Matter Eligibility Doctrine and the Law Under Mayo v. Prometheus, Myriad, and Bilski v. Kappos.
• Conclusions.

About the teacher:
Dennis Crouch is a full time law professor at the University of Missouri School of Law where he teaches a variety of courses on intellectual property, internet law, property, and civil procedure. Professor crouch writes and speaks extensively on patent law and patent reform issues. His Patently-O blog is read each morning by more than twenty thousand patent law professionals worldwide.

Who should attend:
This course is designed for experienced patent law professionals as well as those newly entering the field. There will be a special emphasis on concerns of UK and European firms attempting to navigate the US patent system in the context of a global marketplace. The course will be highly relevant for UK and European patent attorneys in understanding the changing perspectives and needs of their clients, both American and non-American clients.

Teaching Method
The teaching method is by 3 x two-hour seminars each with a distrinct focus, conducted as part lecture and part discussion. The course is intended to be a lively and enjoyable way to interact with others in the field.

Although the course is information rich, there will be ample time for discussion both during the 2-hour talks, held from 6 - 8pm, and informally over drinks.