Day One: 9:00 a.m. - 4:30 p.m. 9:00
Opening RemarksDonald L. Zuhn, Jr.
9:15
Ethics in the PTOThis presentation will address a practitioner's duty of candor and good faith in dealing with the USPTO under 37 C.F.R. § 1.56. The evolution of the equitable defense of inequitable conduct, as well as the impact of the Federal Circuit's decision in Therasense, Inc. v. Becton, Dickinson & Co. and subsequent court decisions on the defense will also be addressed. The presentation will also address the practitioner’s duties to current and former clients and how to avoid conflicts of interest. In addition, the new supplemental examination procedure under the Leahy-Smith America Invents Act, and disciplinary actions at the USPTO will be discussed.
Prof. David L. Schwartz
10:15
Networking Break
Attendees will break out into four separate groups: Biotechnology; Chemical/Pharmaceutical; Electromechanical; and Electronics/Computers. Attendees must select one technology for both days upon check-in at the registration desk.
10:30
Concurrent Sessions I – Advanced Specification Drafting IssuesConcurrent 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, drafting the specification to support claims in the major foreign jurisdictions 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 and 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 decision, will also be discussed. The presentation will include pitfalls and appropriate use of definitions and experimental data.
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, to avoid unwanted limitations, and to provide basis for assertions of non-obviousness.
Thomas E. Wettermann
Electronics/Computers – Discussions will include techniques for preparing patent applications for electronic and computer inventions in view of the Leahy-Smith 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 Patent Trial and Appeal Board, 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 and to avoid creating prosecution disclaimer. The discussions will also address drafting the specification so that it will support broad claims in the major foreign patent offices.
Speaker TBA
11:30
Concurrent Sessions II – Advanced Claim Drafting IssuesThe 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 Federal Circuit 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 §§ 101 and 112.
Lawrence H. Aaronson
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 1:45
Concurrent Workshops I – Advanced Claim DraftingThe 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: Lawrence H. Aaronson, Amanda Lowerre O’Donnell, Thomas E. Wettermann
Electronics/Computers: Joseph A. Herndon, Robert J. Irvine
3:15
Networking Break 3:30
Concurrent Workshops I, Continued 4:30
Adjourn Day Two: 9:00 a.m. - 4:45 p.m. 9:00
Working with a Patent Examiner – Live Demonstration of WebEx Examiner Interview; Everything You Want to Know About the Patent OfficeIt has become difficult to have a face-to-face interview with an examiner since more examiners work from home or in the satellite Patent and Trademark Offices. To address this, the Office has instituted a WebEx facility allowing teleconferences between practitioners and examiners. This segment will include a live demonstration of a WebEx interview showing how to use the tools available to practitioners including assessing the examiner’s demeanor, sharing screens, annotating the shared screens, and sharing files.
Knowing, and working with the constraints on examiners can make prosecution more effective. This session will also discuss: the structure of the examining corps and how to identify and work with examiners at different training levels; the count system, including “count Monday”; when to use the Ombudsman; and when to contact the examiner’s supervisor or the Group Director.
Donald L. Zuhn, Jr.
9:45
Lessons Learned from Six Years of Post-Grant ProceedingsInter Partes Reviews (IPRs), and proceedings under the Transitional Program for Covered Business Method Patents (CBMs), have been in effect for over five years. Petitions for Post-Grant Review (PGR) trials are just now being filed and processed by the PTAB. 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
10:30
Networking Break
Attendees will break out into four separate groups: Biotechnology; Chemical/Pharmaceutical; Electromechanical; and Electronics/Computers. Attendees must select one technology for both days upon check-in at the registration desk.
10:45
Concurrent Sessions III – Advanced Patent Prosecution IssuesConcurrent 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 prioritized examination.
Biotechnology - The discussion will cover techniques for addressing obviousness rejections in view of the USPTO 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 USPTO 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 estoppel.
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 (§ 103) rejections and subject matter (Subject 101) rejections, determining when to appeal, and preparing applications for appeal.
Joseph A. Herndon
11:45
Lunch 12:45
Concurrent Workshops II – Advanced Amendment DraftingThe 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: Lawrence H. Aaronson, Amanda Lowerre O’Donnell, Thomas E. Wettermann
Electronics/Computers: Joseph A. Herndon, Robert J. Irvine
3:00
Examiner InterviewsThe faculty in each technology section will perform a hypothetical interview, critique it, and provide strategies for achieving a productive examiner interview.
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: Lawrence H. Aaronson, Amanda Lowerre O’Donnell, Thomas E. Wettermann
Electronics/Computers: Joseph A. Herndon, Robert J. Irvine
3:30
Networking Break 3:45
Roundtable Discussions in Advanced Patent Prosecution Issues and Wrap-UpThe 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, and statistics for appeals, as well as provide tips on how to effectively use the USPTO pilot programs and other resources on behalf of your clients. Practitioners will leave with tips on recommended strategies for effectively prosecuting applications in view of these trends.
Donald L. Zuhn, Jr., Panel Leader; Lawrence H. Aaronson, Brad W. Crawford, Joseph A. Herndon, Robert J. Irvine, Adam G. Kelly, Kevin E. Noonan, Amanda Lowerre O’Donnell, John Petravich, Christopher P. Singer, Sharon M. Sintich, George Wheeler
4:45
Adjourn
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New York
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