Why you should attend
In this advanced two-day program, you will have a unique opportunity to receive hands-on drafting experience under the guidance of experienced patent prosecutors. By working in small technologically-distinct groups, you will receive individualized feedback on claim drafting and amendment writing skills, as well as learn practical techniques for avoiding prosecution pitfalls. Guidance will be provided on the America Invents Act and its implementation by the Patent and Trademark Office, including the new post-grant review and
inter partes review systems. Course material will include sample problems and model solutions.
Structure of the Programs
The New York City Workshop is organized into four technology sections: Biotechnology, Chemical/Pharmaceutical, Electromechanical, and Electronics/Computers. The San Francisco Workshop is organized into three technology sections: Electromechanical/Mechanical, Electronics/Computers, and Life Sciences (Biotechnology, Chemical/Pharmaceutical). Enrollment in these sections is limited, and two or three senior patent attorneys will lead each section. Homework review and realistic claim drafting and amendment writing exercises are also a special feature of these workshops.
All homework for your technology section must be completed and submitted upon registering onsite at the program.
NEW YORK CITY HOMEWORKSAN FRANCISCO HOMEWORKWho should attend
This program is designed for private or corporate practitioners with patent experience who wish to improve their general claim drafting and amendment writing skills. Registrants will have the opportunity to concentrate for two days on the specialized skills required in their technological area.
PLI Group Discounts
Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.
Cancellations
All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.
Day One: 9:00 a.m. - 4:30 p.m.
Morning Session: 9:00 a.m. - 12:30 p.m.
(Homework due at 9:00 a.m.)
9:00 General Introduction
Rajiv P. Patel
9:15 Ethics for Patent Prosecutors
The various ethical requirements imposed by the Code of Federal Regulations, Manual of Patent Examining Procedure (MPEP), and general rules of professional conduct will be reviewed as they relate to Patent Prosecution Practice.
Burt Magen
10:00 The New 35 USC §102
The America Invents Act (AIA) changed the U.S. patent system from a First-to-Invent (FTI) system to a new First-Inventor-to-File (FITF) system. This section will review the new 35 U.S.C. §102 section of the Patent Statute and provide a practical review and analysis of it as well as tips for applying this new law.
Kavita Aggarwal
10:45 Networking Break
Registrants will break out into three separate groups: Electromechanical/Mechanical, Electronics/Computers and Life Sciences (Biotechnology, Chemical/Pharmaceutical). Registrants must select one technology for both days. For more details about the workshops, please check the PLI website at www.pli.edu
11:00 Advanced Claim Drafting Issues
A review of advanced drafting issues will be presented. The focus will be on language and techniques to avoid, as well as tips for improvement.
Electromechanical/Mechanical, Electronics/Computers: Burt Magen
Life Sciences (Biotechnology, Chemical/Pharmaceutical): Danielle Pasqualone, Rebecca Scarr, Yuko Soneoka
11:45 Patentable Subject Matter
The discussion will highlight recent cases, including recent decisions on patentable subject matter under 35 U.S.C. §101, such as Research Corp. v. Microsoft, Cybersource v. Retail Decisions, Ultramercial v. Hulu, The Association for Molecular Pathology v. Myriad Genetics, Prometheus v. Mayo, as well as recent rules from the U.S. Patent Trademark Office.
Electromechanical/Mechanical, Electronics/Computers: Rajiv P. Patel
Life Sciences (Biotechnology, Chemical/Pharmaceutical): Danielle Pasqualone, Rebecca Scarr, Yuko Soneoka
12:30 Lunch Break
Afternoon Session: 2:00 p.m. - 4:30 p.m.
2:00 Claim Drafting Workshops
Separate groups in Electromechanical/Mechanical, Electronics/Computers and Life Sciences (Biotechnology, Chemical/Pharmaceutical) will participate in claim drafting workshops. These workshops will include: individual review of students’ homework; in-depth discussion of claim drafting techniques; and application of substantive patent law to claim drafting problems. Additional claim drafting problems in each technology discipline will be assigned and thoroughly discussed in small groups.
Electromechanical/Mechanical: Pauline Farmer-Koppenol, Robert Hulse
Electronics/Computers: Daniel R. Brownstone, Rimma Budnitskaya, Sanjeet K. Dutta, Rajiv P. Patel, Christopher M. Tobin
Life Sciences (Biotechnology, Chemical/Pharmaceutical): Danielle Pasqualone, Rebecca Scarr, Yuko Soneoka
3:15 Networking Break
3:30 Claim Drafting Workshops (continued)
4:30 Adjourn
Day Two: 9:00 a.m. - 4:30 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 Advanced Issues for Written Description
As Judge Newman has said, “There are few, if any, legal documents more difficult to craft, more fraught with pitfalls than patent applications[.]” Patent preparation requires significant strategic consideration, particularly in an environment where even one inartfully crafted paragraph in a specification may have negative implications on the scope of patent coverage. This presentation will discuss some notable Federal Circuit decisions pertinent to the specification and corresponding claim interpretation, and will offer practical tips for avoiding such pitfalls. The presentation will also include some tips for drafting in view of the first to disclose aspects of the America Invents Act (AIA).
Electromechanical/Mechanical, Electronics/Computers: Christopher M. Tobin
Life Sciences (Biotechnology, Chemical/Pharmaceutical): Danielle Pasqualone, Rebecca Scarr, Yuko Soneoka
9:45 Countering the Obviousness Rejection
After the KSR decision, examiners have had more flexibility in asserting obviousness rejections. This session reviews strategies for countering obviousness rejections with the goal of advancing prosecution past the asserted rejection.
Sanjeet K. Dutta
10:30 Networking Break
10:45 Post Final Practice
Post Final Practice reviews a Final Office Action received from the U.S. Patent and Trademark Office and covers options and strategy for responding to the Final Office Action. The session will include an overview of considerations for continuations practice and appeals to the Patent Trial and Appeals Board.
Brian M. Hoffman
11:30 Supplemental Examination and Derivation Proceedings
This presentation highlights two new prosecution related mechanisms under the America Invents Act (AIA). Supplemental examination allows a patent owner to seek a low-level review of an issued patent to make sure that it was properly issued based upon some newly submitted information. Derivation proceedings are a new type of proceeding that is available to ensure the person obtaining a patent is a true inventor and did not derive the invention from another. This section provides an introduction to each proceeding and considerations for their use.
Jeffrey A. Miller
12:15 Lunch Break
Afternoon Session: 2:00 p.m. - 4:30 p.m.
2:00 Amendment Workshops
Separate groups in Electromechanical/Mechanical, Electronics/Computers, Life Sciences (Biotechnology, Chemical/Pharmaceutical) will draft amendments and apply substantive patent law to practical patent prosecution problems under personal faculty guidance. Faculty will review and critique each individual student’s amendments from the homework assignment; sample amendment drafting problems in each technology discipline will also be assigned and discussed.
Electromechanical/Mechanical: Pauline Farmer-Koppenol, Robert Hulse
Electronics/Computers: Sanjeet K. Dutta, Jeffrey A. Miller, Rajiv P. Patel, Christopher M. Tobin
Life Sciences (Biotechnology, Chemical/Pharmaceutical): Danielle Pasqualone, Rebecca Scarr, Yuko Soneoka
3:15 Networking Break
3:30 Amendment Workshops (continued)
4:30 Adjourn
Chairperson(s)
Speaker(s)
Kavita Aggarwal ~ Fractional Patent Counsel, Kachyng; Fractional Patent Counsel, NRI Technologies, Law Offices of Kavita Aggarwal
Program Attorney(s)
John M. Mola ~ Director of California Operations, Practising Law Institute
San Francisco Seminar Location
PLI California Center, 685 Market Street, San Francisco, California 94105. (415) 498-2800.
San Francisco Hotel Accommodations
The Palace Hotel, 2 New Montgomery Street, San Francisco, California 94105. Call (800) 917-7456 seven days a week from 6:00 am to 12:00 am (PDT) and mention you are attending this program at Practising Law Institute to receive the preferred rate. For online reservations, go to www.sfpalace.com/pli to receive the preferred rate.
Due to high demand we recommend reserving hotel rooms as early as possible.
PLI programs qualify for credit in all states that require mandatory continuing legal education for attorneys. Please be sure to check with your state and the credit calculator to the right for details.
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Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys. All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.
Please Note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement. PLI programs may qualify for credit based on the requirements outlined in the MCLE Regulations and Ariz. R. Sup. Ct. Rule 45.
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