Freedom to Operate: Strategic Considerations in a Post-AIA World

IP Law & Management Institute
November 4-6, 2012

Partners Michael O’Neill and Justin Oliver presented at the IP Law & Management Institute on November 5th. Their panel was entitled “Freedom to Operate: Strategic Considerations in a Post-AIA World.” In their panel, they discussed the ways in which the AIA will affect freedom-to-operate practice, including:

  • Submissions of prior art to the USPTO, both before issuance and in post-grant challenges
  • Prior user rights and their expansion beyond the realm of business methods
  • Prioritized examination and the increased potential for “submarine” patents
  • Opinions of counsel in the willfulness equation in view of post-Seagate case law and 35 U.S.C. § 298
  • Considerations regarding when the expanded prior art provisions will apply