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Patents Webinar Series: AIA Patent Board Proceedings PDF Print E-mail

 

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Patents Webinar Series

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America Invents Act (AIA) Patent Board Proceedings
Wednesday, November 14, 2012 1:00 to 2:30pm ET

 

Presenters:

Joni Y. Chang
Patent Trial and Appeal Board
U.S. Patent and Trademark Office (USPTO)

Kery A. Fries
Senior Legal Advisor
Office of Patent Legal Administration
and the Office of the Deputy Commissioner for Patent Examination Policy

U.S. Patent and Trademark Office (USPTO)

Moderator:

Nagesh Rao
Senior Government Affairs and Intellectual Property Advisor
Stiefel Family Foundation

 

Download Joni's slide presentation here

Download Kery's slide presentation here

 


ABOUT THIS WEBINAR:

The AIA provides for four new proceedings to be conducted by the Patent Trial and Appeal Board (Board) including interpartes review, post-grant review, the transitional post-grant review for covered business method patents, and derivation proceedings.  The following is a brief description of the proceedings:

Inter partes review is a new trial proceeding to review the patentability of one or more claims in a patent only on a ground that could be raised under 35 U.S.C. §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

Post-grant review is a new trial proceeding to review the patentability of one or more claims in a patent on any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3). The procedure for post-grant review generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.

The transitional program for covered business method patents is a new trial proceeding to review the patentability of one or more claims in a covered business method patent.

A derivation proceeding is a new trial proceeding to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization.


ABOUT THE WEBINAR SERIES:

The focus of this Webinar series is to help bridge the knowledge gap on Intellectual Property Law Issues between the US Government and various stakeholders in the “University-Based Startups Innovation Ecosystem”. A key attribute that make this webinar series unique from other programmatic endeavors is the ability to directly deliver “Thought Leaders” in the field who will address various IP issues from an applied, pragmatic, and deeply experienced viewpoint. Through participation in this webinar program, the audience will be afforded both the opportunity to understand and retain best practices when deriving appropriate IP-Strategic Frameworks coupled with Business and Technology Development, as well as gain access to a much more comprehensive and holistic viewpoint on why Intellectual Property Law is such an important economic tool in the “Entrepreneur’s Toolkit”.


ABOUT THE PRESENTERS:

Joni Y. Chang
Patent Trial and Appeal Board
U.S. Patent and Trademark Office (USPTO)

Judge Chang was appointed to the Patent Trial and Appeal Board (Board) at the U.S. Patent and Trademark Office (USPTO) in April of 2011.  In the past year, Judge Chang has been working with the rulemaking committee to implement the America Invents Act (AIA), including drafting the proposed and final rules for inter partes review, post-grant review, and covered business method review, and derivation proceedings.  Currently, Judge Chang is assigned to the Trial Section of the Board,deciding and conducting reexamination appeals, contested cases, and AIA trial proceedings.

Before her appointment to the Board, Judge Chang served as an Expert Advisor in the Office of Under Secretary and Director of the USPTO on matters related to patent law, rulemaking, and policy.  Previously, as a Senior Legal Advisor in the Office of Patent Legal Administration (OPLA), Judge Chang had worked on the implementation of patent policy and procedure, and significant statutory changes, including the American Inventors Protection Act of 1999 andthe Consolidated Appropriations Act, 2005.  She was awarded the Department of Commerce Bronze Medal Award for superior performance and the Exceptional Career Award for her leadership.Judge Chang’s prior working experience also includes patent examination in the art of semiconductor technology when she was a Primary Patent Examiner.

Before joining the USPTO, Judge Chang worked in the IBM Corporation as a computer system engineer and a semiconductor processing engineer.  Judge Chang received a Juris Doctor degree with Honors from the George Washington University, and a Bachelor of Science Degree in Chemical Engineering (Magna Cum Laude) from the University of Maryland.  She is currently a member of the Maryland Bar.


Kery A. Fries

Senior Legal Advisor
Office of Patent Legal Administration
Office of the Deputy Commissioner for Patent Examination Policy

U.S. Patent and Trademark Office (USPTO)

Kery A. Fries is a senior legal advisor for the Office of Patent Legal Administration and the Office of the Deputy Commissioner for Patent Examination Policy. He has been employed at the USPTO for 21 years. Mr. Fries previously held the position of a primary examiner in Art Unit 1751 and completed a detail to the Board of Patent Appeals and Interferences as an administrative patent judge. A graduate of West Virginia University College of Law, he also completed an internship at the Franklin Pierce Law Center and is currently pursuing an LLM in intellectual property law from George Washington University.


ABOUT THE MODERATOR:

nageshNagesh Rao
Senior Government Affairs and Intellectual Property Advisor
Stiefel Family Foundation


Nagesh Rao is an IP-Law and Technology Commercialization Strategist based out of the San Francisco, Washington DC, and New York metro areas, where he most recently worked for The City of Los Angeles’s CleanTech Initiatives and prior to for the US Department of Commerce's Patent and Trademark Office and Office of Innovation and Entrepreneurship. He has endeavored on projects centered around The White House's mandate on sustainable global economic growth through the foci of startups, intellectual property law, technology development, and applied innovation for the developed and developing world. Programmatic career highlights of his have included co-creation of i6 Green, First Look West (FLoW), and Patents for Humanity, as well being part of the Startup America and Impact Investing federal inter-agency teams. He is a former Mirzayan Science and Technology Policy Fellow with The National Academies (NAS, NAE, IOM, & NRC), and currently serves as a board member to Global Access in Action and Launch:Energy. Finally his intellectually humorous musings on the intersection of applied science, business, and law have been featured in NPR, Triple Pundit, and TechCrunch.



VIEW PREVIOUS WEBINARS IN THIS SERIES:

To view video recordings and download presentation slides, please click on the links below.

May 9, 2012
1:00-2:30pm
USPTO Patent for Humanity Program

June 13, 2012
1:00-2:30pm
Patents 101

July 11, 2012
1:00-2:30pm
Patent and AIA Implementation

August 8, 2012
1:00-2:30pm
Intellectual Property, Non-Patented


October 10, 2012
1:00-2:30 pm ET
Working with the USPTO: Selecting the Right Legal Advocates


UPCOMING WEBINARS IN THIS SERIES:

All webinars listed below are scheduled from 1:00-2:30 pm ET.
For changes in schedules and other announcements, please visit the series website.

December 12 – Protecting IP in Global Markets
Understanding a PCT, international issues on IP procurement, markets and competitors

January 9, 2013 - Picking the Right Global Markets
Topics: To where and how do I export? What programs are out there to help?

 

IMPORTANT INFORMATION FOR ATTENDEES:

WEBINAR SCHEDULE: This webinar series is scheduled every 2nd Wednesday of the month. Changes in schedules or topics will be posted on this page and sent to you through email.

WEBINAR DURATION: Each session is a 90-minute webinar with 60 minutes of presentation and 30 minutes of Q&A.

COST: Free, but registration required by clicking on the Register button above. Your registration is valid for all webinars in this series

HOW TO PARTICIPATE?: This webinar is online. You need a computer with web access for the visual/audio. You may also dial-in using the audio-only telephone number. The call in details and instructions on how to join the webinar will be sent to you via email after you register. Once registered to the webinar you will receive a reminder email 24 hours before the start of the webinar with instructions on how to join.

QUESTIONS TO SPEAKERS: Q&A is conducted by a chat box to the speakers.

WHO SHOULD PARTICIPATE IN THE WEBINAR?: National and international media, federal and state government officials, venture capitalists, angel investors, Global 1000 companies, industry representatives, university officials, entrepreneurs, tech transfer professionals, students, and university faculty and staff.

SLIDES AND VIDEO: The slide presentations and video recording will be available on this page. If you are unable to join the live webinar, you may view the recorded video that will be posted within 24 hours after the scheduled webinar ends.

For questions or more information, please email us at This e-mail address is being protected from spambots. You need JavaScript enabled to view it