Seminar  Program

Advanced Patent Prosecution Workshop 2017: Claim Drafting & Amendment Writing


CLICK HERE FOR HOMEWORK

All homework for your technology section must be completed and submitted upon registering onsite at the program.

 

This advanced program is designed for private or corporate and other in-house practitioners with patent experience who wish to improve their general claim drafting and amendment writing skills. By way of homework and classroom sample problems and solutions, attendees will have the opportunity to concentrate for two days on the specialized skills required in their technological area by receiving individualized feedback and guidance from experienced patent prosecutors. Discussions will include practical techniques for avoiding prosecution pitfalls and working with the USPTO in general and specifically with respect to section 101 issues to get your client’s patent applications allowed. In addition, counsel will be provided on the America Invents Act implementation by the Patent and Trademark Office, including the new Post-Grant Review and Inter Partes Review, as well as Covered Business Method Patents. Furthermore, the practical impact of significant Supreme Court and Federal Circuit decisions, e.g., Myriad, Mayo, Alice, and KSR, will be explained. Lastly, the program also includes Intellectual Property specific ethics CLE.

Structure of the Programs
The New York City and Chicago Workshops are 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).

Homework review and realistic claim drafting and amendment writing exercises are also a special feature of these Workshops. Homework must be completed and submitted upon registering onsite at the program. More information about homework will be made available at www.pli.edu at a later date.


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.

9:00 Program Overview
Donald L. Zuhn, Jr.

9:15 Ethics in the PTO
Subject matter conflicts are increasingly of concern as firms add clients. 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. In addition, the presentation will address developments in inequitable conduct both in the courts and at the USPTO.
Prof. David L. Schwartz

10:15 Networking Break

Registrants will break out into four separate groups: Biotechnology; Chemical/Pharmaceutical; Electromechanical; and, Electronics/Computers. Registrants must select one technology for both days. For more details about the Workshops, please check the PLI website at www.pli.edu.


10:30 Concurrent Sessions I - Advanced Specification Drafting Issues

Concurrent lectures specific to each technology will cover advanced issues in drafting of patent specifications. Areas will include the written description, enablement and best mode requirements of 35 U.S.C. § 112, as well as practical tips for ensuring the specification is truly a primary source of claim interpretation.

Biotechnology - Techniques for drafting a specification which will meet the utility, written description and enablement requirements and provide support for asserting non-obviousness over the prior art subject matter eligibility will be discussed. Recent case law developments involving the application of the written description requirement to antibodies, including the Amgen v. Sanofi appeal will also be discussed. The presentation will include pitfalls and appropriate use of definitions and experimental data discussed.
John Petravich

Chemical/Pharmaceutical – Attendees will learn techniques for drafting specifications directed to new compounds, products (including solid state forms of compounds), chemical products, pharmaceutical formulations including those having particular pharmacokinetic or dissolution properties, and methods of treatment. The presentation will include recent case law regarding the written description and enablement requirements, obviousness, and subject matter eligibility.
Brad W. Crawford

Electromechanical - KSR and the decisions following it affect the characterization of the problem to be solved in the specification.  Practitioners also need to avoid overly-limiting language in the specification. This presentation provides guidance based on seminal and recent Federal Circuit cases concerning interpretations of specifications that limit the scope of the claims; and the impact on the written description and enablement requirements when limitations are imported from the specification. Tips will be provided to draft specifications that support broad claims in view of the broadest reasonable interpretation standard and to avoid unwanted limitations and on how to draft the specification to provide basis for non-obvious claims.
Thomas E. Wettermann

Electronics/Computers – Discussions will include techniques for preparing patent applications for electronic and computer inventions in view of the America Invents Act and the Guidelines for Determining Compliance With 35 U.S.C. § 112, as well as several cases from the Supreme Court, Federal Circuit and the PTAB, including Ex Parte Miyazaki, KSR v. Teleflex, Bilski v. Kappos, Ariad v. Lilly , Alice v. CLS, Williamson v. Citrix and Teva v. Sandoz. The presentation provides practical guidelines for drafting patent specifications to support broad claims that will survive post-grant proceedings, to avoid creating prosecution disclaimer and to avoid Best Mode problems.
Daniel P. Williams



11:30 Concurrent Sessions II - Advanced Claim Drafting Issues

The presentation will include a review of advanced claim drafting issues specific to each technology discipline. The focus will be on language and techniques to avoid, as well as tips for improvement. The discussion will also include recent CAFC case law applicable to each technology.

Biotechnology - Methods for maximizing patent protection through claims to screening methods, methods of treatment, and methods of preparation, as well as to nucleic acids (such as antisense and siRNA), proteins, antibodies, nucleic acid vectors, and transgenic organisms, while satisfying the written description and enablement requirements, and addressing potential subject matter eligibility issues, will be discussed.
Sharon M. Sintich

Chemical/Pharmaceutical - Techniques for drafting chemical compound, composition, drug product, method of preparation, and method of treatment claims for maximum protection while avoiding the prior art will be discussed, including the use of functional claim language, avoiding divided infringement issues, and compliance with the written description and enablement requirements.
George Wheeler

Electromechanical - This session will address how to draft claims that meet the requirements of the USPTO and precedents of the Supreme Court and Federal Circuit as applied to the mechanical and electrical arts. The session will also provide practical tips from experienced practitioners on how to write claims that fully cover the invention while still satisfying the requirements of Sections 101 and 112.
Bradley J. Hulbert

Electronics/Computers – Practitioners will learn advanced rules of claim drafting, including how to claim electronic circuit and hardware user interfaces, software, data structures, APIs and protocols, and method of doing business. The session also includes a discussion of different claim types, apparatus, method, computer readable medium and means-plus function claims and what type of claims to use with different types of inventions.
Robert J. Irvine



12:30 Lunch Break

1:45 Concurrent Workshops I - Advanced Claim Drafting
The separate technology groups will participate in claim drafting Workshops. Included will be individual review of students’ homework and additional claim drafting problems. It will be a unique opportunity for questions to be answered individually or in group discussions, and for students to receive individualized feedback.

Biotechnology: Karen Imgrund Deak, Adam G. Kelly, Kevin E. Noonan, John Petravich, Suresh B. Pillai, Sharon M. Sintich, Donald L. Zuhn, Jr.
Chemical/Pharmaceutical: Brad W. Crawford, Christopher P. Singer, George Wheeler
Electromechanical: Bradley J. Hulbert, Amanda Lowerre O’Donnell, Thomas E. Wettermann
Electronics/Computers: Joseph A. Herndon, Robert J. Irvine, Daniel P. Williams


3:15 Networking Break

3:30 Concurrent Workshops I (continued)

4:30 Adjourn

Day Two: 9:00 a.m. - 5:00 p.m.

9:00 Subject Matter Eligibility after Mayo/Alice and Latest Federal Circuit Decisions and USPTO Guidance
This presentation will focus on understanding the limits of patent eligible subject matter following U.S. Supreme Court decisions in Mayo Collaborative Serv. v. Prometheus Lab., Inc. and Alice Corp. v. CLS Bank Int'l, as well as recent Federal Circuit decisions in Rapid Litigation Management Ltd. v. Cellzdirect, Inc.; Enfish, LLC v. Microsoft Corp.; BASCOM Global Internet Serv., Inc. v. AT&T Mobility LLC; Ariosa Diagnostics, Inc. v. Sequenom, Inc.; and McRO, Inc. v. Bandai Namco Games Am. Inc., and in view of the latest guidance on subject matter eligibility issued by the U.S. Patent and Trademark Office. The speakers will provided guidance on what can and cannot be patented and 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.
Robert J. Irvine, Kevin E. Noonan

10:00 Lessons Learned from Four 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 four years. Petitions for Post-Grant Review (PGR) trials are now being filed and processed by the PTAB but at a rate much lower than IPR petitions. In addition, the percentage of patents adversely impacted by these proceedings is decreasing. This presentation will cover the basics of each of these proceedings and provide guidance on best practices to effectively file a successful petition and to effectively defend against a petition before and after institution.
Adam G. Kelly

Registrants will break out into four separate groups: Biotechnology; Chemical/Pharmaceutical; Electromechanical; and, Electronics/Computers. 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 Networking Break

11:15 Concurrent Sessions III - Advanced Patent Prosecution Issues

Concurrent lectures specific to each technology will cover advanced issues, including post-KSR decisions and strategies for avoiding prosecution disclaimer and prosecution history estoppel, subject matter eligibility, compliance with the duty of disclosure, performing Examiner interviews, and Track 1 accelerated examination.

Biotechnology - The discussion will cover techniques for addressing obviousness rejections in view of the PTO obviousness guidelines, addressing written description and enablement rejections; addressing subject matter eligibility rejections in view of Mayo, Myriad, and the PTO subject matter eligibility guidance and examples, how and when to perform interviews, and complying with the duty of disclosure requirement.
Donald L. Zuhn, Jr.

Chemical/Pharmaceutical - Attendees will learn strategies for responding to office actions, including how to minimize prosecution history estoppel, and how and when to perform interviews. The presentation will include strategies for responding to obviousness and subject matter eligibility rejections in view of the PTO guidelines.
Christopher P. Singer

Electromechanical - The discussion will cover the use of different claim types including means-plus-function claims, how to decide whether and when to amend or not amend claims, and how to structure patentability arguments to gain allowance while minimizing estopel.
Amanda Lowerre O’Donnell

Electronics/Computers – Attendees will learn about advanced patent prosecution topics including recent cases and techniques for working with the USPTO to obtain effective patents. Topics addressed include accelerating examination, minimizing or avoiding prosecution history estoppel, maximizing results of examiner interviews, minimizing prosecution delays, overcoming obviousness (Section 103) rejections and subject matter (Subject 101) rejections, determining when to appeal, and preparing applications for appeal.
Joseph A. Herndon



12:15 Lunch Break

1:15 Concurrent Workshops II - Advanced Amendment Drafting
The separate technology groups 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.

Biotechnology: Karen Imgrund Deak, Adam G. Kelly, Kevin E. Noonan, John Petravich, Suresh B. Pillai, Sharon M. Sintich, Donald L. Zuhn, Jr.
Chemical/Pharmaceutical: Brad W. Crawford, Christopher P. Singer, George Wheeler
Electromechanical: Bradley J. Hulbert, Amanda Lowerre O’Donnell, Thomas E. Wettermann
Electronics/Computers: Joseph A. Herndon, Robert J. Irvine, Daniel P. Williams


3:45 Networking Break

4:00 Roundtable Discussions in Advanced Patent Prosecution Issues and Wrap-Up
The faculty will discuss developments at the USPTO and trends across all technology areas such as allowance rates, pendency, length of time to first office action, statistics for appeals etc., as well as provide tips on how to effectively use the PTO pilot programs and other resources on behalf of your clients. Practitioners will leave with tips on recommend strategies for effectively prosecuting applications in view of these trends.
Panel Leader: Donald L. Zuhn, Jr.; Brad W. Crawford, Joseph A. Herndon, Bradley J. Hulbert, Robert J. Irvine, Adam G. Kelly, Kevin E. Noonan, Amanda Lowerre O’Donnell, John Petravich, Christopher P. Singer, Sharon M. Sintich, George Wheeler, Daniel P. Williams

5:00 Adjourn

Chairperson(s)
Donald L. Zuhn, Jr., Ph.D. ~ McDonnell Boehnen Hulbert & Berghoff LLP
Speaker(s)
Brad W. Crawford ~ Polsinelli PC
Karen Imgrund Deak, Ph.D. ~ Commercialization Specialist, University of Notre Dame, Office of Technology Transfer
Joseph A. Herndon ~ McDonnell Boehnen Hulbert & Berghoff LLP
Bradley J. Hulbert ~ McDonnell Boehnen Hulbert & Berghoff LLP
Robert J. Irvine ~ Invention Mine LLC
Adam G. Kelly ~ Loeb & Loeb
Kevin E. Noonan, Ph.D. ~ McDonnell Boehnen Hulbert & Berghoff LLP
Amanda Lowerre O'Donnell ~ Fitch Even Tabin & Flannery LLP
John Petravich ~ Deputy General Counsel & Vice President of Intellectual Property, Integrated DNA Technologies, Inc.
Suresh B. Pillai, Ph.D. ~ Senior Corporate Counsel, IP, Astellas US, LLC
Prof. David L. Schwartz ~ Professor of Law, Northwestern University School of Law
Christopher P. Singer, Ph.D. ~ McAndrews, Held & Malloy, Ltd.
Sharon M. Sintich, Ph.D. ~ Marshall, Gerstein &Borun LLP
Thomas E. Wettermann ~ McDonnell Boehnen Hulbert & Berghoff LLP
George Wheeler ~ McAndrews, Held & Malloy, Ltd.
Daniel P. Williams ~ Invention Mine LLC
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

Chicago Seminar Location

University of Chicago Gleacher Center, 450 N. Cityfront Plaza Drive, Chicago, Il 60611. (312) 464-8787.

Hotel Accommodation

Intercontinental Hotel Chicago, 505 N. Michigan Avenue, Chicago, IL 60611. (312) 944-4100.  A block of rooms has been reserved for this program.  Please call reservations at 1-800-628-2112 and mention the name of the program you are attending. 

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

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Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

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New York

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Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

 

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Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing Sep. 16, 2016

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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
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