Jay P. Lessler, Kenneth N. Nigon

This 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.

Robert C. Faber

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.

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, 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.

Anna D. DiGabriele Petti

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.

Keith D. MacMillan

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.

Rebecca Goldman Rudich

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.

Kenneth N. Nigon

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 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.

Steven Lendaris

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.

J. Robert Dean, Jr.

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.

Robert C. Faber

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.

Ann M. McCrackin

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: Gerard F. Diebner, Steven Lendaris, Anna D. DiGabriele Petti

Chemical/Pharmaceutical: J. Robert Dean, Jr., Dianna G. El Hioum, Deborah L. Lu, Keith D. MacMillian

Electromechanical: Robert C. Faber, Rebecca Goldman Rudich, Robert D. Schaffer

Electronics/Computers: Michael P. Dunnam, Ann M. McCrackin, Kenneth N. Nigon

It 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 during which practitioners and examiners may openly discuss technical aspects of the invention and legal aspects of the rejection.  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, and presenting legal arguments to refine Office Action responses.

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.

Jay P. Lessler, Kenneth N. Nigon, Claire X. Pappas (via WebEx video conference)

Inter 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.

W. Todd Baker

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.

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 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.

Gerard F. Diebner

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.

Deborah L. Lu

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.

Rebecca Goldman Rudich, Robert D. Schaffer

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.

Michael P. Dunnam

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: Gerard F. Diebner, Steven Lendaris, Anna D. DiGabriele Petti

Chemical/Pharmaceutical: J. Robert Dean, Jr., Dianna G. El Hioum, Deborah L. Lu, Keith D. MacMillian

Electromechanical: Rebecca Goldman Rudich, Robert D. Schaffer

Electronics/Computers: Michael P. Dunnam, Ann M. McCrackin, Kenneth N. Nigon

Examiner interviews can be quite helpful for advancing prosecution of patent applications at the U.S. Patent and Trademark Office, and in particular providing the examiner with further insight into the invention for which a patent is being sought.  We will discuss the legal requirements for examiner interviews, including the location and time of such interviews, when during prosecution interviews may be conducted, and interview summaries by the examiner and the patent applicant. The faculty in each technology section will perform a hypothetical interview, critique it, and provide strategies for achieving a productive examiner interview.

Biotechnology: Gerard F. Diebner, Steven Lendaris, Anna D. DiGabriele Petti

Chemical/Pharmaceutical: J. Robert Dean, Jr., Dianna G. El Hioum, Deborah L. Lu, Keith D. MacMillian

Electromechanical: Rebecca Goldman Rudich, Robert D. Schaffer

Electronics/Computers: Michael P. Dunnam, Ann M. McCrackin, Kenneth N. Nigon

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, 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.

Ann M. McCrackin, Panel Leader; Gerard F. Diebner, Michael P. Dunnam, Jay P. Lessler, Kenneth N. Nigon, Robert D. Schaffer

Pauline Farmer-Koppenol, Rajiv P. Patel

The various ethical requirements imposed by the Code of Federal Regulations, Manual of Patent Examining Procedure (MPEP), and general rules of professional conduct can be complex and sometimes difficult to navigate. This session will review these regulations and rules as they relate to Patent Prosecution Practice. 

Burt Magen

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 how changes to the new 35 U.S.C. § 102 section of the Patent Statute may be analyzed by the courts and provide a practical review and tips for analyzing and applying this new law.

Renee DuBord Brown

Attendees will break out into three separate groups: Electromechanical/Mechanical; Electronics/Computers; and Life Sciences (Biotechnology, Chemical/Pharmaceutical). Attendees must select one technology for both days upon check-in at the registration desk.

Claim drafting is the core of a patent prosecutor’s skillset. This session reviews advanced drafting issues that patent prosecutors can add to their toolbox. The focus will be on language and techniques to avoid, as well as tips for improvement in view of recent caselaw and U.S. Patent and Trademark Office guidance.

Electromechanical/Mechanical, Electronics/Computers: Burt Magen

Life Sciences (Biotechnology, Chemical/Pharmaceutical): Roger C. Kuan

This presentation will focus on understanding the limits of patent eligible subject matter following the U.S. Supreme Court decisions in Assoc. for Molecular Pathology v. Myriad Genetics, Inc. and Alice Corp. v. CLS Bank, Intl. in view of the continued guidance issued by the USPTO to practitioners in view of growing Federal Circuit decisions. The presentation includes discussion on what can and cannot be patented, as well as 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.

Electromechanical/Mechanical, Electronics/Computers: Rajiv P. Patel

Life Sciences (Biotechnology, Chemical/Pharmaceutical): Tom Anderton

Separate groups in Electromechanical/Mechanical, Electronics/Computers, and Life Sciences (Biotechnology, Chemical/Pharmaceutical) will participate in claim drafting Workshops, which 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: Judith Szepesi

Electronics/Computers: Rajiv P. Patel, Christopher M. Tobin

Life Sciences (Biotechnology, Chemical/Pharmaceutical): Tom Anderton, Roger C. Kuan

It 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 during which practitioners and examiners may openly discuss technical aspects of the invention and legal aspects of the rejection.  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, and presenting legal arguments to refine Office Action responses.

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.

Claire X. Pappas (via WebEx video conference), Rajiv P. Patel, Christopher M. Tobin

Attendees will break out into three separate groups: Electromechanical/Mechanical; Electronics/Computers; and Life Sciences (Biotechnology, Chemical/Pharmaceutical). Attendees must select one technology for both days upon check-in at the registration desk.

After the KSR decision, examiners have had more flexibility in asserting obviousness rejections. In addition, the Federal Circuit continues to provide their guidance on the law of obviousness. This session reviews strategies for countering obviousness rejections with the goal of advancing prosecution past the asserted rejection.

Electromechanical/Mechanical, Electronics/Computers: Judith Szepesi

Life Sciences (Biotechnology, Chemical/Pharmaceutical): Melissa M. Harwood

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): Pauline Farmer-Koppenol

This presentation culminates the two days of lessons by reviewing the impact from prosecution of an application in subsequent enforcement activity.  The presentation covers common errors, ways to avoid those errors and lessons to take back for prosecution practice.

Jeffrey A. Miller

Separate groups in Electromechanical/Mechanical, Electronics/Computers, and 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: Judith Szepesi

Electronics/Computers: Jeffrey A. Miller, Rajiv P. Patel, Christopher M. Tobin

Life Sciences (Biotechnology, Chemical/Pharmaceutical): Pauline Farmer-Koppenol, Melissa M. Harwood

Donald L. Zuhn, Jr.

This 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

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.

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, 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

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 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

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: Lawrence H. Aaronson, Amanda Lowerre O’Donnell, Thomas E. Wettermann

Electronics/Computers: Joseph A. Herndon, Robert J. Irvine

It 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 during which practitioners and examiners may openly discuss technical aspects of the invention and legal aspects of the rejection.  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, and presenting legal arguments to refine Office Action responses.

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.

Claire X. Pappas (via WebEx video conference), Donald L. Zuhn, Jr.

Inter 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

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.

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 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

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: Lawrence H. Aaronson, Amanda Lowerre O’Donnell, Thomas E. Wettermann

Electronics/Computers: Joseph A. Herndon, Robert J. Irvine

Examiner interviews can be quite helpful for advancing prosecution of patent applications at the U.S. Patent and Trademark Office, and in particular providing the examiner with further insight into the invention for which a patent is being sought.  We will discuss the legal requirements for examiner interviews, including the location and time of such interviews, when during prosecution interviews may be conducted, and interview summaries by the examiner and the patent applicant. The 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

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, 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