Ex Parte Patent Appeals: Determining Whether to Appeal, Trends and Lessons From Recent Cases
Recording of a 90-minute premium CLE video webinar with Q&A
NOTE: A PTAB judge has been added to the panel.
This CLE webinar will guide patent counsel on ex parte appeals. The panel will discuss the strategy of choosing ex parte appeals and key considerations. The panel will also offer best practices for ex parte appeals.
Outline
- Considerations when deciding to pursue an ex parte appeal
- Overview of examiner level data relevant to ex parte appeals and issue-level trends in decisions by the Board
- Patent term adjustment implications of Board decisions
- Best practices
Benefits
The panel will review these and other important issues:
- What are the key considerations to factor in when determining whether to pursue an ex parte appeal?
- What guidance can practitioners glean from recent issue-level data and examiner-level data in ex parte appeals?
- What best practices should patent counsel employ when conducting an ex parte appeal to negotiate with an examiner?
Faculty
Honorable Rae Lynn Guest
Administrative Patent Judge
U.S. Patent and Trademark Office – Patent Trial and Appeal Board
Judge Guest was appointed as an Administrative Patent Judge in April 2011. She first joined the Board in February 2008... | Read More
Judge Guest was appointed as an Administrative Patent Judge in April 2011. She first joined the Board in February 2008 as a Patent Attorney. Prior to joining the Board, she served as an associate attorney with Sterne Kessler Goldstein & Fox and as a patent attorney with the Office of Naval Research.
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Thomas Bejin
Member
Bejin Bieneman
Mr. Bejin concentrates his practice on intellectual property litigation, strategic counseling and freedom to operate... | Read More
Mr. Bejin concentrates his practice on intellectual property litigation, strategic counseling and freedom to operate studies. He has handled patent, trademark and trade secret cases in state and federal courts throughout the country. Mr. Bejin has significant trial experience and has appeared in well over 100 cases in more than 20 different states. He has served clients in diverse fields such as automotive technology, wireless communication, lasers, robotics and medical devices. More recently, Mr. Bejin has represented clients in IPR proceedings. His representation has regularly involved providing strategic advice related to directing innovation and maximizing shareholder value.
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Adam Stephenson
Patent Attorney
Adam R. Stephenson
Mr. Stephenson is Chair of the Ex Parte Appeals Subcommittee of the Patent Law Committee of AIPLA, a member of the... | Read More
Mr. Stephenson is Chair of the Ex Parte Appeals Subcommittee of the Patent Law Committee of AIPLA, a member of the Appeals to the PTAB Committee of the PTAB Bar Association, and a member of the Patent Office Practice Committee of IPO. His interest in ex parte appeals led him to co-found a company that developed the first commercial database of ex parte appeals decisions and reflects an interest that began in law school about the use of examiner statistics to aid patent prosecution work. Mr. Stephenson has written and been involved in the prosecution of hundreds of patents across the entire spectrum of technology.
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Kate Gaudry
Partner
Kilpatrick Townsend & Stockton
Ms. Gaudry focuses her practice on data-driven and strategic patent prosecution. She has authored over 60 publications... | Read More
Ms. Gaudry focuses her practice on data-driven and strategic patent prosecution. She has authored over 60 publications sharing results of generally applicable analyses, and her work was also pivotal in the shutting down of the USPTO’s SAWS program, which secretly subjected select patent applications to increased examination scrutiny. Ms. Gaudry’s research and data focus was recognized when she was one of five attorneys across all practice areas to be selected for LexMachina’s and Law360’s Data-Driven Lawyer award in its inaugural year of 2018. Most of her clients are in the software, computers, and quantitative-biology technical areas. Ms. Gaudry particularly enjoys patent-prosecution relating to artificial-intelligence and computational-biology technologies.
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