Kevin B. Laurence
Partner
Bar Membership Other Than Virginia
Tel (703) 413-3000

Kevin B. Laurence

Partner

Kevin B. Laurence is a partner in the firm’s Post-Grant Patent Practice group.  Mr. Laurence represents patent owners and challengers in high stakes post-grant proceedings at the USPTO.  He is experienced with all aspects of review proceedings, reexaminations, and reissues.  He has been consistently recognized by peer reviews as one of the top practitioners in the country for post-grant proceedings and has also received consistent recognition from prominent rankings such as Best Lawyers in America, Chambers USA, Intellectual Asset Magazine, Managing IP Magazine, and Super Lawyers.

Mr. Laurence has served as an instructor for Patent Resources Group since 2009.  He teaches a comprehensive three-day course on post-issuance administrative proceedings titled Post-Grant Patent Practice and coauthors the two-volume treatise provided in conjunction with the course.  He has co-authored over 40 articles for Intellectual Property Today magazine on post-grant patent topics.  He has served as vice chair of Intellectual Property Owners Association’s U.S. Post-Grant Patent Office Practice committee since 2012. 

In addition to post-grant topics, he has lectured and taught extensively on other aspects of patent practice.  He taught courses titled "Biotechnology and Chemical Patent Law" and "International Intellectual Property Law" as an adjunct professor at the University of Utah’s S.J. Quinney College of Law during 2003-2008 and "Intellectual Property Law" at Brigham Young University’s J. Reuben Clark Law School in 2004.  Prior to joining Oblon Spivak, Mr. Laurence was a partner at Stoel Rives LLP where he founded the patent practice in their Salt Lake City office in 2001.

Mr. Laurence has 22 years of experience providing patent-related services involving the life sciences, especially pharmaceuticals and medical devices, chemical fields, and other technologies.  In addition to his contested proceedings practice, he focuses on all phases of patent procurement, including reissue applications, portfolio management, preparation of non-infringement and invalidity opinions, product clearance analysis, due diligence evaluations, pre-litigation evaluations, strategic counseling for asserting patent rights or responding to patent infringement allegations, licensing, and serving as an expert witness. 

Representative Matters

Post-Grant Proceedings

Represent a molecular diagnostics company as a petitioner in inter partes review proceedings at the Patent Trial and Appeal Board in conjunction with copending litigation involving multiple parties.

Represent a manufacturer in defending a family of patents in inter partes review proceedings and in related ex parte and inter partes reexaminations and reissues.

Represent a medical device company as a requester in inter partes reexaminations for a family of patents.

Represented a packaging company in its successful assertion of three patents and acted as lead reexamination counsel in the defense of the patents in inter partes reexaminations at the Central Reexamination Unit and at the Patent Trial and Appeal Board.  The co-pending litigation was settled while appeals were pending at the U.S. Court of Appeals for the Federal Circuit.

Directed the simultaneous reexamination of a patent and prosecution of two related applications for plastic films, which resulted in the settlement of copending litigation after a reexamination certificate issued and two patents were granted with commercially valuable claims.

Represented a medical device company in interference disputes and crafted the technical basis for a favorable settlement to interference litigation in district court that followed an interference proceeding at the U.S. Patent and Trademark Office.

Opinion Practice and Litigation Counseling

Provided an opinion that an independent claim in a patent asserted by a plaintiff was invalid since it was broadened during reexamination. This invalidity position resulted in a summary judgment for the defendant.

Co-led a team involved in clearing a family of pharmaceutical compounds for clinical study.

Patent Procurement and Portfolio Management

Developed worldwide strategies to build several portfolios with 100+ U.S. and foreign patents. Prepared and prosecuted several hundred patent applications to patent issuance.

Advised a medical device company for more than a decade on building its patent portfolio, clearing products, and investment transactions.

Intellectual Asset Management's IAM Patent 1000: The World’s Leading Patent Practitioners, (2012-2013)

IAM Patent 1000's commentary: 

  • 2013 – “leading reexam buff”
  • 2012 - "Both academically and in practice, Kevin Laurence is among a small handful of leading reexamination experts in the United States."

Best Lawyers in America® (Patent Law) (2007-2014)

Chambers USA, Selected as one of "America's Leading Lawyers for Business" (Utah) (Intellectual Property) (2007-2013)

Chambers' commentary and quotes from clients and others:

  • 2013 – "Recognized for the high quality of his advice"
  • 2012 – "Clients feel at ease"
  • 2011 - "Market sources are full of admiration for Kevin Laurence, who impresses with his record in building patent portfolios. He has developed a particular niche in reexamination work."
  • 2010 - "Renowned as 'a talented attorney who understands the intricacies of business' he excels in the pharmaceutical, medical devices, chemicals and life sciences fields."
  • 2009 - "gets high marks for expertise and client-care"
  • 2008 - "He is 'very easy to work with,' thanks to his broad experience and 'keen understanding of clients' wants and needs.'"
  • 2007 - "has developed an admirable reputation. Clients were especially impressed with his global outlook and strategy-making talents, and appreciated his close relationship with patent examiners and supervisors."

Managing Intellectual Property magazine, named an “IP Star” (2013)

Martindale-Hubbell® AV® Preeminent™  5.0 out of 5  (2002-2014)

Super Lawyers magazine (2007-2013)

Presentations and Publications:

Presentations:

  • Instructor, "Post-Grant Patent Practice: Reissue, Owner-Requested Reexamination, and Supplemental Examination," Patent Resources Group, Bonita Springs, Florida, Apr. 2, 2014
  • Instructor, "Post-Grant Patent Practice: Review and Reexamination," Patent Resources Group, Bonita Springs, Florida, Mar. 30-Apr. 1, 2014
  • Panelist, "Strategies for Success in Post-Grant Proceedings," Intellectual Property Owners PTO Day, Mar. 25, 2014
  • Instructor, "Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination," Patent Resources Group, Huntington Beach, California, Oct. 16-18, 2013
  • Presenter, “Review Proceedings,” IP Section of the Utah State Bar, Jun. 18, 2013
  • Panelist, "Inter Partes Review Basics," Intellectual Property & Technology Institute, Intellectual Property Law Section of the Colorado Bar Association, May 31, 2013
  • Instructor, "Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination," Patent Resources Group, Orlando, Florida, scheduled for Apr. 7-9, 2013
  • Instructor, "Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination," Patent Resources Group, Indian Wells, California, Oct. 17-19, 2012
  • Panelist, "Inter Partes Review: Rules & Strategy, Intellectual Property Owners Association," webinar, Sep. 6, 2012
  • Moderator, "Final PTO Rules Implementing AIA Changes to Patent Examination," Federal Circuit Bar Association, Washington, D.C., August 23, 2012
  • Presenter, "Utilizing New Procedures to Challenge Troubling Patents," Sixth National Forum on Freedom to Operate, American Conference Institute, Philadelphia, Pennsylvania, July 30-31, 2012
  • Presenter, "Post-Grant Patent Practice," Chartered Institute of Patent Attorneys, London, United Kingdom, May 9, 2012
  • Presenter, "Overview of the America Invents Act," Association of Danish Intellectual Property Attorneys, Copenhagen, Denmark, May 8, 2012
  • Lecturer, "Overview of Post-Grant Patent Practice," Patent Prosecution course, Lewis & Clark Law School, Portland, Oregon, Apr. 4, 2012
  • Instructor, "Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination," Patent Resources Group, Bonita Springs, Florida, Mar. 29-31, 2012
  • Panelist, "USPTO Post-Grant Proceedings After New Patent Reform Law," Strafford Publications, webinar, September 28, 2011
  • Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Naples, Florida, Apr. 14-16, 2011
  • Lecturer, "Post-Grant Patent Practice," Patent Prosecution course, Lewis & Clark Law School, Portland, Oregon, Apr. 7, 2011
  • Presenter, "Patent Validity Challenges and Patent Reform Legislation," IPSA at the University of Michigan Law School, Ann Arbor, Michigan, Mar. 14, 2011
  • Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Palm Springs, California, Oct. 3-5, 2010
  • Presenter, "Pharmaceuticals and Biotechnology: PTO's 2010 Obviousness Guidelines," Chartered Institute of Patent Attorneys, London, United Kingdom, Sept. 22, 2010
  • Presenter, "Merger and Suspension of Concurrent Inter Partes Reexamination and Reissue Proceedings," Committee on Patent Office Inter Partes Proceedings of the Intellectual Property Owners Association, Aug. 17, 2010
  • Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Bonita Springs, Florida, Apr. 15-17, 2010
  • Panel Moderator, "Reexamination Tips and Strategies" – a panel discussion featuring Gregory Morse, the Director of the Central Reexamination Unit, Oregon Patent Law Association, Portland, Oregon, Mar. 15, 2010
  • Panel Moderator, "Perspectives of Feedstock Suppliers on the Bio-based Chemical Value Chain," Infocast's Bio-Based Chemical Conference, San Diego, California, Feb. 10, 2010
  • Presenter, "Overview of Patent Reexamination and Reissue," IP Section of the King County Bar Association, Seattle, Washington, Feb. 4, 2010
  • Presenter, "Post-Grant Practice Primer," Oregon Patent Law Association, Portland, Oregon, Dec. 7, 2009
  • Presenter, "Obviousness for Drug Compounds and Formulations," Danish Patent Office, Taastrup, Denmark, Nov. 11, 2009
  • Presenter, "Reexamination and Post-Grant Review Proceedings," IP Section of the Utah State Bar, Salt Lake City, Utah, Oct. 23, 2009
  • Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Las Vegas, Nevada, Oct. 4-6, 2009
  • Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Orlando, Florida, Apr. 23-25, 2009
  • Presenter, "Reissue Practice," SIPLA at Santa Clara University School of Law, Santa Clara, California, Mar. 17, 2009  
  • Presenter, "Supreme Court's Review of the Obviousness Test," Utah IP Summit, Salt Lake City, Utah, Feb. 16, 2007
  • Presenter, "Supreme Court's Review of the Obviousness Test," Oregon Patent Law Association, Portland, Oregon, Dec. 6, 2006
  • Presenter, "Supreme Court's Review of the Obviousness Test," Orange County Patent Law Association, Costa Mesa, California, Oct. 25, 2006
  • Presenter, "Patent Issues Unique to Nanotechnology Development," nanoUtah Conference, Salt Lake City, Utah, Oct. 5, 2006
  • Presenter, "Ownership of an Employee's Invention," Utah State Bar's Annual Convention, Newport Beach, California, Jul. 14, 2006
  • Presenter, "Claim Construction of Markush Groups and Other Alternative Limitations," Sixth Advanced Forum on Biotech Patents, American Conference Institute, San Francisco, California, Feb. 16, 2006
  • Workshop co-leader, "Building and Managing Patent Portfolios in the Life Sciences," Henry Stewart Conference Studies, San Francisco, California, Sep. 27, 2005

Publications

Treatises

  • "Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination" (coauthor), Patent Resources Group, 2012-2014
  • "Patent Reexamination and Reissue Practice" (coauthor), Patent Resources Group, 2009-2011
  • "Post-Grant Proceedings Before the Patent Trial and Appeal Board" (contributing author), Practising Law Institute, 2014

Articles

  • "Redundant Patentability Challenges in Review Petitions" (coauthor), Intellectual Property Today, 22-23, Feb. 2014
  • "Stays Pending Review" (coauthor), Intellectual Property Today, 34-35, Dec. 2013
  • "Representation at the PTAB and Litigation Counsel" (coauthor), Intellectual Property Today, Oct. 2013
  • "Printed Publications in Reexamination and Inter Partes Review" (coauthor), Intellectual Property Today, 33-35, Sep. 2013
  • "Prosecution Bars in Litigation with Concurrent Reexamination or Review Proceedings" (coauthor), Intellectual Property Today, 20-22, Jul. 2013
  • "The Enablement Requirement for References in Reexamination and Inter Partes Review" (coauthor), Intellectual Property Today, Apr. 2013
  • "Reexamination and Review Proceedings In Light of Belkin" (coauthor), Intellectual Property Today, Mar. 2013
  • "Options When Reexamination Is Not Ordered as Requested " (coauthor), Intellectual Property Today, 15-17, Feb. 2013
  • "Reexamination After Or In a Late Stage of Litigation" (coauthor), Intellectual Property Today, 14-16, Dec. 2012
  • "Petitions for Inter Partes Review" (coauthor), Intellectual Property Today, 14-15, Nov. 2012
  • "Constitutionality of Reexamination is Confirmed Again" (coauthor), Intellectual Property Today, 6-7, Sep. 2012
  • "Recent Changes to Reissue That Are Favorable for Patent Owners" (coauthor), Intellectual Property Today, 11-13, Aug. 2012
  • "Broadening Reissue: Material Narrowing as Clarified by In re Youman," (coauthor) Intellectual Property Today, 20-21, Jul. 2012
  • "Top 20 Practice Tips for Patent Owners in Reexamination - Part II" (coauthor), Intellectual Property Today, 16-17, June 2012
  • "Top 20 Practice Tips for Patent Owners in Reexamination - Part I" (coauthor), Intellectual Property Today, 34-35, May 2012
  • "Supplemental Examination and the Proposed Rules" (coauthor), Intellectual Property Today, 7-9, Mar. 2012
  • "When is Ex Parte Reexamination Available?" (coauthor), Intellectual Property Today, 22-23, Feb. 2012
  • "Argument-Based Estoppel in Reexamination and Reissue" (coauthor), Intellectual Property Today, 8-9, Jan. 2012
  • "Post-Grant Review Proceedings Compared with EPO Oppositions" (coauthor), Intellectual Property Today, 32-35, Dec. 2011
  • "Changes to Reexamination under the America Invents Act" (coauthor), Intellectual Property Today, 22-23, Nov. 2011
  • "License and Settlement Agreements in Relation to Reexamination and Review Proceedings" (coauthor), Intellectual Property Today, 28-31, Oct. 2011
  • "Protests in Reissue Applications" (coauthor), Intellectual Property Today, 18-19, Sep. 2011
  • "Reexamination in Light of i4i and Therasense" (coauthor), Intellectual Property Today, 22-24, Aug. 2011
  • "Amendment Rights in Reexamination" (coauthor), Intellectual Property Today, 8-9, July 2011
  • "Broadening Reissue: The Recapture Rule and Material Narrowing" (coauthor), Intellectual Property Today, 14-16, June 2011
  • "Patent Reexamination and Willful Infringement" (coauthor), Intellectual Property Today, 14-15, May 2011
  • "Broadening Reissue: The Recapture Rule and Surrendered Subject Matter" (coauthor), Intellectual Property Today, 30-32, Apr. 2011
  • "Reexamination and Injunctive Relief" (coauthor), Intellectual Property Today, 28-29, Mar. 2011
  • "Reexam + Reissue = Merger, Suspension or Concurrent Prosecution" (coauthor), Intellectual Property Today, 14-16, Feb. 2011
  • "Do You Need Separate Reexamination Counsel?" (coauthor), Intellectual Property Today, 12-13, Jan. 2011
  • "Reexam + Reexam = Merger (Usually)" (coauthor), Intellectual Property Today, 20-21, Dec. 2010
  • "The Presumption of Validity after Reexamination or Reissue" (coauthor), Intellectual Property Today, at 30-31, Nov. 2010
  • "Notice of Concurrent Proceedings in Reexamination and Reissue" (coauthor), Intellectual Property Today, at 32-33, Oct. 2010
  • "Requesting Inter Partes Reexamination" (coauthor), Intellectual Property Today, at 12-13, Sept. 2010
  • "Multiple Reexamination Requests" (coauthor), Intellectual Property Today, at 8-9, Aug. 2010
  • "Requesting Reexamination: Requirements and Best Practices" (coauthor), Intellectual Property Today, at 26-27, July 2010
  • "Supplemental Examination Under the Patent Reform Act of 2010" (coauthor), Intellectual Property Today, at 8-9, June 2010
  • "Post-Grant Proceedings Under the Patent Reform Act of 2010" (coauthor), Intellectual Property Today, at 18-20, May 2010
  • "Substantial New Questions of Patentability" (coauthor), Intellectual Property Today, at 34-35, Apr. 2010
  • "Proposed Post-Grant Review Proceedings and Reexamination" (coauthor), Intellectual Property Today, at 14-16, Mar. 2010
  • "Claim Changes in Reexamination and Reissue" (coauthor), Intellectual Property Today, at 24-26, Feb. 2010
  • "Post-Grant Options for Patent Owners" (coauthor), Intellectual Property Today, at 20-23, Jan. 2010