March 21, 2018
Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and SensePlease join Fitch, Even, Tabin & Flannery LLP for a free webinar, “Avoiding Prosecution Churn: When Ex Parte PTAB Appeals Make Dollars and Sense,” on Wednesday, March 21, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.
During the process of acquiring patent rights through the patent application process, applicants sometimes wish to seek review of rejections by an examiner. The formal mechanism for achieving this review is an ex parte appeal to the Patent Trial and Appeals Board (PTAB). Some patent practitioners avoid the ex parte review process, viewing it as lengthy and expensive. But, data and experiences recently compiled by an AIPLA subcommittee suggest that this conventional thinking may be incorrect. It turns out that pursuing an appeal can be a more attractive option than other patent prosecution procedures.
During this webinar, we will explore how the AIPLA findings may provide guidance on
- When to file ex parte PTAB appeals
- How often to file these appeals
- Which issues to choose to appeal
- USPTO incentives
- Working with the examiner
- Patent term adjustment
- Pre-appeal brief reviews
- Other relevant statistics
Thomas F. Lebens, a partner at Fitch Even, assists clients in preparing and prosecuting patent and trademark applications, including appeals, post-grant review, and interferences. He also counsels clients in IP and business strategy; licensing issues; infringement and validity analysis and opinions; and copyright matters.
Trent Ostler is in-house counsel for Illumina, Inc., where he helps protect the company’s software and informatics products and inventions through patent, copyright, and open source licensing. Trent is the founder of Anticipat.com, a PTAB appeals database.
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On March 13, in Intel Corp. v. PACT XPP Schweiz AG, the Federal Circuit concluded that the "known techniques" rationale may support a motivation to combine two references so long as the combination is a "suitable option" to address a known problem in the art, even if the combination does not result in an obvious improvement to the proposed system. Read more