Legal Strategies for Navigating the Brave New Patent World

Palo Alto Presentation

04 Oct 2011 12:00 p.m. - 02:00 p.m.

Crowne Plaza Palo Alto
4290 El Camino Real
Palo Alto, CA 94306
Kalie Moore
(202) 778-1643

Six years in the making, the Leahy-Smith America Invents Act was approved by the Senate on September 8th and is expected to be signed into law by President Obama this week. This landmark legislation brings a number of important changes to U.S. patent law.

Companies will need to reevaluate their patent application filing strategies and their policies regarding public disclosures of their inventions in view of the shift to first-to-file and the changes to what is considered prior art. Strategies for dealing with competitors’ patent estates will also have to evolve, as will litigation strategies and defenses. In the wake of the Act, the use of reexamination and the new post-grant review procedures may relocate patent battles from the courtrooms of Eastern Texas to the halls of the PTO.

This seminar will focus on practical advice for dealing with the new Act, including:

  • Impact of moving to first-to-file on your U.S. patent portfolio, including the enlarged scope of prior art
  • Effective use of the post-grant review system, including the availability of stays of litigation for pending post-grant reviews
  • Replacement of inter partes reexamination with inter partes review and its impact
  • Timetable for transition and effective dates
  • Fees and other key changes in patent practice and structure
  • Elimination of the best mode defense in litigation
  • Significant narrowing of false marking causes of action


Palo Alto:

  • Kim N. Van Voorhis, Morrison & Foerster
  • Eric S. Walters, Morrison & Foerster
  • Catherine M. Polizzi, Morrison & Foerster


Additional speakers will be added.




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