McAndrews Shareholders George Wheeler and Herbert D. Hart III to Present at IPLAC’s “Prosecuting Pre-AIA Patent Applications and Responding to Post-Grant Petitions” Program


McAndrews, Held & Malloy shareholders George Wheeler and Herbert D. Hart III will be featured speakers at the Intellectual Property Law Association of Chicago’s (IPLAC) “Prosecuting Pre-AIA Patent Applications and Responding to Post-Grant Petitions” program, March 27, in Chicago.

Following the passage of the AIA, McAndrews attorneys were among the first to participate directly in rulemaking for post grant trials and to assist clients and the bar in developing strategies for managing the transition from pre-AIA to AIA law. They are, therefore, especially qualified to navigate both the new priority rules and the post-grant review proceedings created by the AIA.

The program will provide practical tips and strategies to file and prosecute patent applications with pre-AIA priority that contain any claims having later priority and to determine if you should maintain pre-AIA priority or switch to post-AIA priority. It will also address how to ensure the correct steps are taken to protect the patent rights being challenged in Patent Trial and Appeal Board trial proceedings. Many attorneys will find the USPTO contested cases procedure unfamiliar and rigorous, and may be surprised when notification of these proceedings is received.

The event’s speakers and their respective presentations are as follows:

  • George Wheeler, McAndrews, Held & Malloy: So You Have a Pre-AIA Patent Portfolio: How to Maintain Its Pre-AIA Status in 2014 and Beyond
  • Herb Hart, McAndrews, Held & Malloy: What to Do When You Are Served with a Post Grant Trial Petition
  • John Paniaguas, Katten Muchin Rosenman: Post AIA Strategies for Prosecuting Pre-AIA Applications,

Two hours of Illinois CLE credit will be offered to those in attendance.

George counsels corporate clients in a wide variety of patent matters involving diverse chemical, mechanical and medical technologies, including more than 25 ex parte reexaminations and several inter partes reexaminations. His specialty is patent analysis and prosecution, both for patent owners and alleged patent infringers. He has been named a Top Patent Prosecutor by PatentBuddy®, an honor achieved by only two percent of U.S. patent practitioners. Prior to joining McAndrews, Wheeler worked as an in-house patent attorney at The Procter & Gamble Company and Morton Thiokol, Inc.

Herb has significant experience in litigation before the Patent Trial and Appeal Board (PTAB), specifically in life science and chemical technologies, and has served as an expert witness on interference practice. He has recently spoken before clients, associations, and other audiences on PTAB trial practice, as well as on rulemaking under the post-grant provisions of the AIA. Herb has served on the AIPLA Special Task Force on AIA Rulemaking and he was also appointed to the six-member IPO/ABA/AIPLA Expert Committee on Regulations for Conducting New PGR/IPR Procedures (the “Gang of 6”). He is widely published in the field of intellectual property law and has provided commentary in numerous legal, business, and scientific publications. Herb is also an associate editor and contributing author of the ABA book, ANDA Litigation: Strategies and Tactics for Pharmaceutical Patent Litigators.

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