Seminar  Program

Advanced Patent Prosecution Workshop 2018: Claim Drafting & Amendment Writing


Select a Location:

This advanced program is designed for corporate and other in-house practitioners or outside counsel with patent experience who wish to improve their patent preparation and prosecution skills, including drafting the specification and claims for U.S. and foreign patent applications, conducting examiner interviews, including a live demo of a WebEx interview, and drafting effective Office Action responses. 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 U.S. Patent and Trademark Office to get your client’s patent applications allowed. In addition, faculty will provide counsel on the implementation by the USPTO of the Leahy-Smith America Invents Act, including post-grant review proceedings such as inter partes reviews. 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 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 Opening Remarks

Jay P. Lessler, Kenneth N. Nigon



9:15 Ethics in the PTO

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



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 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, 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



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 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



12:30 Lunch

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: 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



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 Office

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)



9:45 Lessons Learned from Six 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 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



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 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 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



11:45 Lunch

12:45 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: 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



3:00 Examiner Interviews

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



3:30 Networking Break

3:45 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, 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



4:45 Adjourn

Co-Chair(s)
Jay P. Lessler ~ Blank Rome LLP
Kenneth N. Nigon ~ Schwegman Lundberg & Woessner, P.A.
Speaker(s)
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 ~ Schwegman Lundberg & Woessner, P.A.
Dianna G. El Hioum ~ Fox Rothschild LLP
Robert C. Faber ~ Ostrolenk Faber LLP
Steven Lendaris ~ Baker Botts LLP
Deborah L. Lu, Ph.D. ~ Duane Morris LLP
Keith D. MacMillan ~ Director (Counsel), Legal, Merck & Co
Ann M. McCrackin ~ Schwegman Lundberg & Woessner, P.A.
Claire X. Pappas ~ Supervisory Patent Examiner, United States Patent and Trademark Office
Anna D. DiGabriele Petti, Ph.D. ~ Director, Patent Attorney, Regeneron Pharmaceuticals, Inc.
Rebecca Goldman Rudich ~ Meunier Carlin & Curfman LLC
Robert D. Schaffer ~ Law Office of Robert D. Schaffer
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

New York City Seminar Location

PLI New York Center
, 1177 Avenue of the Americas, (2nd floor), entrance on 45th Street, New York, New York 10036. (800) 260-4754.

New York City Hotel Accommodations

Crowne Plaza Times Square Manhattan, 1605 Broadway (48th Street), New York, NY 10019 (212) 977-4000. When calling, mention Practising Law Institute. You can also make reservations online to access PLI's rates.

The Muse, 130 West 46th Street, New York, NY 10036. Please call reservations at 1-800-546-7866. When calling, please mention Practising Law Institute and Corporate Rate ID 786839408. In addition, you can book online at PLI Muse Hotel

Millennium Broadway Hotel, 145 West 44th Street, New York, NY 10036. Please call reservations at 1-800-622-5569. When calling, please mention Practising Law Institute. In addition, you can book online at PLI Millennium Hotel .

 Hyatt Times Square, 135 W. 45th Street, New York, NY 10036. For reservations, please call (646) 364-1234. When calling mention rate code CR56218 or Practising Law Institute.

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

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

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Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

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Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

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New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

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Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

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Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

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CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Dubai (CLPD-DUBAI):  PLI’s live seminars may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

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.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

This advanced program is designed for corporate and other in-house practitioners or outside counsel with patent experience who wish to improve their patent preparation and prosecution skills, including drafting the specification and claims for U.S. and foreign patent applications, conducting examiner interviews, including a live demo of a WebEx interview, and drafting effective Office Action responses. 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 U.S. Patent and Trademark Office to get your client’s patent applications allowed. In addition, faculty will provide counsel on the implementation by the USPTO of the Leahy-Smith America Invents Act, including post-grant review proceedings such as inter partes reviews. 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 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 Opening Remarks

Pauline Farmer-Koppenol, 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 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



10:00 The New 35 U.S.C. § 102

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



10:45 Networking Break


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.



11:00 Advanced Claim Drafting Issues

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



11:45 Patentable Subject Matter

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



12:30 Lunch

2:00 Claim Drafting Workshops

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



3:15 Networking Break

3:30 Claim Drafting Workshops, Continued

4:30 Adjourn

Day Two: 9:00 a.m. - 4:00 p.m.

9:00 Working with a Patent Examiner – Live Demonstration of WebEx Examiner Interview; Everything You Want to Know About the Patent Office

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.



9:45 Countering the Obviousness Rejection

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



10:30 Networking Break

10:45 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. 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



11:30 The Litigation Perspective on Patent Prosecution

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



12:15 Lunch

1:30 Amendment Workshops

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



2:45 Networking Break

3:00 Amendment Workshops, Continued

4:00 Adjourn

Co-Chair(s)
Pauline Farmer-Koppenol ~ Associate General Counsel - Patents , Bio-Rad Laboratories, Inc.
Rajiv P. Patel ~ Fenwick & West LLP
Speaker(s)
Tom Anderton ~ Squire Patton Boggs (US) LLP
Renee DuBord Brown ~ Associate General Counsel, Intellectual Property , Knowles Corporation
Melissa M. Harwood ~ Wilson Sonsini Goodrich & Rosati
Roger C. Kuan ~ McDermott Will & Emery LLP
Burt Magen ~ Vierra Magen Marcus LLP
Jeffrey A. Miller ~ Arnold & Porter Kaye Scholer LLP
Claire X. Pappas ~ Supervisory Patent Examiner, United States Patent and Trademark Office
Judith Szepesi ~ HIPLegal LLP
Christopher M. Tobin ~ Michael Best & Friedrich LLP
Program Attorney(s)
Ivo Mijac ~ Senior Program Manager, California, PLI

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (800) 260-4754.

San Francisco Hotel Accommodations

Park Central Hotel, 50 Third Street, San Francisco, CA 94103. 415-974-6400. When calling, please mention PLI and SET#287179. In addition, you may book online at Park Central Hotel PLI.

Omni Hotel San Francisco, 500 California Street, San Francisco, CA 94104. 415-677-9494.  When calling, please mention Practising Law Institute.  You may also book online at PLI Omni 2018.

Due to high demand we recommend reserving hotel rooms as early as possible.

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

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

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.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Dubai (CLPD-DUBAI):  PLI’s live seminars may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

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.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

This advanced program is designed for corporate and other in-house practitioners or outside counsel with patent experience who wish to improve their patent preparation and prosecution skills, including drafting the specification and claims for U.S. and foreign patent applications, conducting examiner interviews, including a live demo of a WebEx interview, and drafting effective Office Action responses. 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 U.S. Patent and Trademark Office to get your client’s patent applications allowed. In addition, faculty will provide counsel on the implementation by the USPTO of the Leahy-Smith America Invents Act, including post-grant review proceedings such as inter partes reviews. 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 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 Opening Remarks

Donald L. Zuhn, Jr.



9:15 Ethics in the PTO

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



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 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, 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 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 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 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: 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 Office

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.



9:45 Lessons Learned from Six 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 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 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 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 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: Lawrence H. Aaronson, Amanda Lowerre O’Donnell, Thomas E. Wettermann

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



3:00 Examiner Interviews

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



3:30 Networking Break

3:45 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, 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

Chairperson(s)
Donald L. Zuhn, Jr., Ph.D. ~ McDonnell Boehnen Hulbert & Berghoff LLP
Speaker(s)
Lawrence H. Aaronson ~ McDonnell Boehnen Hulbert & Berghoff LLP
Brad W. Crawford ~ Polsinelli PC
Karen Imgrund Deak, Ph.D. ~ Director, Networking Engagement, University of Notre Dame
Joseph A. Herndon ~ 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
Claire X. Pappas ~ Supervisory Patent Examiner, United States Patent and Trademark Office
John Petravich ~ Deputy General Counsel & Vice President of Intellectual Property, Integrated DNA Technologies, Inc.
Suresh B. Pillai, Ph.D. ~ Senior Corporate Counsel, IP, Astellas Pharma Inc.
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.
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. Please contact the hotel directly for the preferred rate and mention Practising Law Institute or Corporate ID 100312169.  You may also book online at PRACTISING LAW INSTITUTE.    Please note that the rate is a corporate and not a group rate. 

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

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

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.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Dubai (CLPD-DUBAI):  PLI’s live seminars may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

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.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

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"Great content. The workshops were very helpful and do a good job providing example scenarios that may prove useful later down the road."
Tim Kamman, Invention Mine LLC

"I liked the high caliber, top notch trainers/attorneys. The very best."
Rafael Ortiz, Ph.D., Michelman Inc.

…the program was of high quality and it was nice to get a chance for small group discussions with the faculty.”
William Braunlin, Rutgers University

I enjoyed working through the in-class problems/ homework and receiving feedback…
Ishir Mehta, Saliwanchik, Lloyd & Eisenschenk


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