Advanced Patent Prosecution Workshop 2010: Claim Drafting & Amendment Writing

Overview

Click here for the San Francisco  Homework problems.

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 and learn practical techniques for avoiding prosecution pitfalls.  Guidance on recent changes in the U.S. Patent and Trademark Office and important cases, e.g., Ariad Pharmaceuticals v. Eli Lilly regarding the written description requirement and the U.S. Supreme Court’s decision in In re Bilski regarding patent eligible subject matter and recent precedential opinions by the Board of Patent Appeals and Interferences, will be provided.  Course material will include sample problems and model solutions.

Structure of the Programs

The New York City Workshop is organized into four technological sections: Biotechnology, Chemical/Pharmaceutical, Electromechanical and Electronics/Computers. The San Francisco Workshop is organized into three technology sections: Biology/Chemistry, Electrical/Computer, and Mechanical. 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 a also a special feature of these workshops.

Important! Early registration is advisable as enrollment is limited.

Who 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.

Special Bonus to all Registrants

All attendees will receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment the program and to stand alone as a permanent reference. PLI's Course Handbooks represent the definitive thinking of the nation's finest legal minds, and are often the standard reference in the field.

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.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

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.

Schedule

First Day:  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  On-Sale Bar

The presentation covers the current state of the law regarding the on-sale bar. Guidelines are provided for engaging potential customers and partners during a product’s development cycle without jeopardizing patent rights or triggering the start of the on-sale bar time period.

Dana Rao

10:45  Break

Registrants will break out into separate groups and  must select one technology for both days.

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.

Electrical/Computer; Mechanical: Burt Magen
Biology/Chemistry: Jean Burke Fordis, William L. Leschensky

11:45  Patentable Subject Matter

The discussion will highlight recent cases including recent decisions on patentable subject matter under 35 U.S.C. §101, as well as recent rules from the U.S. Patent Trademark Office.

Electrical/Computer; Mechanical: Rajiv P. Patel
Biology/Chemistry: Rajiv P. Patel

12:30  Lunch Break

Afternoon Session:  2:00 p.m. - 4:30 p.m.

2:00  Claim Drafting Workshops

Separate groups in Biology/Chemistry, Electrical/Computer, and Mechanical Arts 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.

Biology/Chemistry: Burke Fordis, William L. Leschensky, Joseph R. Snyder
Electrical/Computer: Rajiv P. Patel, Christopher M. Tobin, Dana Rao
Mechanical: Daniel R. Brownstone

4:30  Adjourn

Second Day:  9:00 a.m. - 4:30 p.m.

Morning Session:  9:00 a.m. - 12:15 p.m.

9:00  Duty of Disclosure

A review of the case law, and practical tips for complying with the duty of disclosure.

Roxana H. Yang

9:45  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.

Electrical/Computer, Mechanical: Christopher M. Tobin
Biology/Chemistry: Jean Burke Fordis, William L. Leschensky

10:30  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 Board of Patent Appeals and Interferences.

Brian M. Hoffman

11:30  Affidavit Practice

This presentation provides instruction on how to effectively use affidavits during the patent prosecution process.  Practical tips and legal issues will be discussed so that participants will know how to make appropriate use of affidavits in order to achieve more efficient allowance of patent applications without creating negative issues for subsequent patent infringement litigation.

Sanjeet K. Dutta

12:15  Lunch Break
 
Afternoon Session:  1:30 p.m. - 4:00 p.m.

1:30  Amendment Workshops

Separate groups in Biology/Chemistry, Electrical/Computers and Mechanical Arts 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.

Biology/Chemistry: Jean Burke Fordis, William L. Leschensky, Joseph R. Snyder
Electrical/Computer: Rajiv P. Patel, Christopher M. Tobin, Sanjeet Dhutta
Mechanical: Robert Hulse

4:00  Adjourn

Faculty

Chairperson(s)

Speaker(s)

Program Attorney(s)

CLE Credit

Travel Information

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.