Legal Strategies for Navigating the Brave New Patent World

WMACCA Technology and IP Forum

10 Nov 2011 12:00 p.m. - 01:00 p.m. EST

Robin Hayutin
(703) 242-8773

Six years in the making, the Leahy-Smith America Invents Act was approved by the Senate on September 8th and was signed into law by President Obama on September 16th. 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


  • Barry E. Bretschneider, Morrison & Foerster
  • Alex Chartove, Morrison & Foerster
  • Patricia A. Martone, Morrison & Foerster

WMACCA will apply for 1.0 hour of Virginia MCLE credit.




Unsolicited e-mails and information sent to Morrison & Foerster will not be considered confidential, may be disclosed to others pursuant to our Privacy Policy, may not receive a response, and do not create an attorney-client relationship with Morrison & Foerster. If you are not already a client of Morrison & Foerster, do not include any confidential information in this message. Also, please note that our attorneys do not seek to practice law in any jurisdiction in which they are not properly authorized to do so.