Past Webinars

  • May 31, 2017
The Scope of AIA's Estoppel Provision: Are We Still Flying Blind Six Years Later?

Please join Fitch, Even, Tabin & Flannery LLP for a complimentary webinar, “The Scope of AIA’s Estoppel Provision: Are We Still Flying Blind Six Years Later?,” on Wednesday, May 31, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

Congress drafted the “estoppel” provision in the American Invents Act (AIA) to ensure that petitioners did not abuse the post-grant review procedure established by the USPTO. The estoppel provision precludes the petitioner from later challenging the same patent claim, either in the USPTO or in civil litigation, on any ground that the petitioner “raised” or “reasonably could have raised” during the post-grant review. Almost since its enactment, there has been a debate over the appropriate scope of this provision. Given that the estoppel effect was largely untested, the first participants in these proceedings flew blind to some extent. Now, roughly six years later, rulings regarding the application of the estoppel are inconsistent and tend to leave practitioners more confused and no better off than the first post-grant review trailblazers.

This webinar will provide information on what you need to know about this provision, including these topics:

  • Overview of the estoppel provision
  • The provision’s legislative history
  • The impact of recent decisions applying the provision
  • Why the provision is not scaring off petitioners of post-grant reviews           

Our speaker will be Fitch Even partner Eric L. Broxterman. Eric’s unique blend of experience covers the entire spectrum of intellectual property law, including patent procurement, risk avoidance (invalidity and freedom-to-operate opinions), monetization (portfolio management, including licensing and transactions), and enforcement (litigation, post-grant reviews, and settlement agreements). 

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