On-Demand   On-Demand Web Programs

Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing

Released on: Sep. 16, 2016
Running Time: 02:24:44

Please note that this was recorded from the New York sessions in July 2016 and only three segments – “Ethics in the PTO”, “Patent Eligible Subject Matter after Mayo, Myriad, and Alice”, and “Lessons Learned from Three Years of Post-Grant Proceedings” – are available in this On-Demand Web Program.

Ethics in the PTO?

Firms representing multiple clients need to be aware of potential subject matter conflicts.  At initiation, firms must perform both new matter and new client screening.  During prosecution, prior art from one client may be cited in an Office Action for another client, or there may be confidential material from one client that is relevant to the pending application of another client.  This presentation will address your duties to current and former clients and provide guidance on avoiding conflicts and on handling conflicts when they arise, including obtaining informed consent for potentially conflicting representations. 

 

Patent Eligible Subject Matter after Mayo, Myriad, and Alice

This presentation will focus on understanding the limits of patent eligible subject matter following the U.S. Supreme Court decisions in Mayo Collaborative Services v. Prometheus Laboratories, Inc., Assoc. for Molecular Pathology v. Myriad Genetics, Inc., and Alice Corp. v. CLS Bank, Int'l in view of the subject matter eligibility guidance issued by the USPTO and subsequent case law.  The speakers will provide guidance on what is currently considered subject matter eligible, provide tips for drafting applications to avoid rejections under 35 U.S.C. § 101 and responding to Office Actions including rejections under 35 U.S.C. § 101, and review the types of claims that have survived scrutiny by the courts and USPTO since the Supreme Court's Mayo, Myriad, and Alice decisions.

 

Lessons Learned from Three Years of Post-Grant Proceedings

Inter Partes Reviews (IPRs), and proceedings under the Transitional Program for Covered Business Method Patents (CBMs), have been in effect for over three years. Petitions for Post-Grant Review (PGR) trials are just now being filed and processed by the PTAB.  This presentation will cover the basics of each of these proceedings and provide guidance on pitfalls to avoid both to file a successful petition and to effectively defend against a petition before and after institution.

Lecture Topics [Total time 02:24:44]

Segments with an asterisk (*) are available only with the purchase of the entire program.


  • Program Overview* [00:10:30]
    Jay P. Lessler
  • Ethics in the PTO [00:59:40]
    Robert C. Faber
  • Patent Eligible Subject Matter after Mayo, Myriad, and Alice; Lessons Learned from Three Years of Post-Grant Proceedings [01:14:34]
    Michael P. Dunnam, Jay P. Lessler, W. Todd Baker 

The purchase price of this Web Program includes the following articles from the Course Handbook available online:


  • Conflicts of Interest in Patent Acquisition and Patent Litigation Representation (April 28, 2016)
    Robert C. Faber
  • Prosecution Ethics, Including Therasense v. Becton Dickinson (April 28, 2016)
    Robert C. Faber
  • Protection of Computer Implemented Inventions Under the USPTO’s July 2015 Update to December 2014 Interim Eligibility Guidance
    Michael P. Dunnam
  • Patentable Eligibility of Nature-Based Products as Analyzed by the USPTO
    Jay P. Lessler 

Presentation Material


  • Ethics in the PTO
    Robert C. Faber
  • Patent Eligible Subject Matter after Mayo, Myriad, and Alice
    Michael P. Dunnam
  • Patent Eligible Subject Matter after Mayo, Myriad, and Alice
    Jay P. Lessler
Co-Chair(s)
Jay P. Lessler ~ Blank Rome LLP
Kenneth N. Nigon ~ Schwegman Lundberg & Woessner, P.A.
Paul M. Zagar ~ Blank Rome LLP
Speaker(s)
Cheryl H. Agris, Ph.D. ~ Agris & von Natzmer, LLP
W. Todd Baker ~ Oblon, McClelland, Maier & Neustadt, L.L.P.
J. Robert Dean, Jr. ~ Ohlandt, Greeley, Ruggiero & Perle, L.L.P.
Gerard F. Diebner ~ Tannenbaum Helpern Syracuse & Hirschtritt LLP
Michael P. Dunnam ~ Baker & Hostetler LLP
Robert C. Faber ~ Ostrolenk Faber LLP
Adda C. Gogoris ~ Hueschen and Sage, PLLC
Deborah L. Lu, Ph.D. ~ Vedder Price P.C.
Ann M. McCrackin ~ Schwegman Lundberg & Woessner, P.A.
Rebecca Goldman Rudich ~ Meunier Carlin & Curfman LLC
Robert D. Schaffer ~ Law Office of Robert D. Schaffer
John C. Todaro ~ Managing Counsel, Intellectual Property Group, Merck & Co., Inc.
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Related Items

Live Programs  Live Programs

Advanced Patent Prosecution Workshop 2017: Claim Drafting & Amendment Writing (Chicago, IL) Sep. 12 - 13, 2017

Handbook  Course Handbook Archive

Advanced Patent Prosecution Workshop 2017: Claim Drafting & Amendment Writing Jay P Lessler, Blank Rome LLP
Rajiv P Patel, Fenwick & West LLP
Donald L Zuhn, McDonnell Boehnen Hulbert & Berghoff LLP
Kenneth N Nigon, Schwegman Lundberg & Woessner, P.A.
 
Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing Jay P Lessler, Blank Rome LLP
Rajiv P Patel, Fenwick & West LLP
Donald L Zuhn, McDonnell Boehnen Hulbert & Berghoff LLP
Kenneth N Nigon, RatnerPrestia
 
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