On-Demand   On-Demand Web Programs

Advanced Patent Prosecution Workshop 2017: Claim Drafting & Amendment Writing

Released on: Sep. 26, 2017
Running Time: 03:02:01

Please note that this was recorded from the New York sessions in July 2017 and only three segments – “Ethics in the PTO”, “Subject Matter Eligibility after Mayo/Alice and Latest Federal Circuit Decisions and USPTO Guidance”, and “Lessons Learned from Four Years of Post-Grant Proceedings” – are available in this On-Demand Web Program.

Why You Should Attend

This advanced program is designed for private or corporate and other in-house practitioners with patent experience. Discussions will include the America Invents Act implementation by the Patent and Trademark Office, including the new Post-Grant Review and Inter Partes Review, as well as Covered Business Method Patents. Furthermore, the practical impact of significant Supreme Court and Federal Circuit decisions, e.g., Myriad, Mayo, Alice, and KSR, will be explained. Lastly, the program also includes Intellectual Property specific ethics CLE.

What You Will Learn

  • Ethics in the PTO
  • Subject Matter Eligibility after Mayo/Alice and Latest Federal Circuit Decisions and USPTO Guidance
  • Lessons Learned from Four Years of Post-Grant Proceedings

Ethics in the PTO

Subject matter conflicts are increasingly of concern as firms add clients. At initiation, firms must perform both new matter and new client screening. During prosecution, prior art from one client may be cited in an Office Action for another client, or there may be confidential material from one client that is relevant to the pending application of another client.  This presentation will address your duties to current and former clients and provide guidance on avoiding conflicts and on handling conflicts when they arise, including obtaining informed consent for potentially conflicting representations. In addition, the presentation will address developments in inequitable conduct both in the courts and at the USPTO.

Robert C. Faber

Subject Matter Eligibility after Mayo/Alice and Latest Federal Circuit Decisions and USPTO Guidance

This presentation will focus on understanding the limits of patent eligible subject matter following U.S. Supreme Court decisions in Mayo Collaborative Serv. v. Prometheus Lab., Inc. and Alice Corp. v. CLS Bank Int'l, as well as recent Federal Circuit decisions in Rapid Litigation Management Ltd. v. Cellzdirect, Inc.; Enfish, LLC v. Microsoft Corp.; BASCOM Global Internet Serv., Inc. v. AT&T Mobility LLC; Ariosa Diagnostics, Inc. v. Sequenom, Inc.; and McRO, Inc. v. Bandai Namco Games Am. Inc., and in view of the latest guidance on subject matter eligibility issued by the U.S. Patent and Trademark Office. The speakers will provided guidance on what can and cannot be patented and provide tips for drafting applications to avoid rejections under 35 U.S.C. § 101 and responding to Office Actions including rejections under 35 U.S.C. § 101.

Michael P. Dunnam, Jay P. Lessler

Lessons Learned from Four Years of Post-Grant Proceedings

Inter Partes Reviews (IPRs), and proceedings under the Transitional Program for Covered Business Method Patents (CBMs), have been in effect for over four years. Petitions for Post-Grant Review (PGR) trials are just now being filed and processed by the PTAB but at a rate much lower than IPR petitions. In addition, the percentage of patents adversely impacted by these proceedings is decreasing. This presentation will cover the basics of each of these proceedings and provide guidance onbest practices to effectively file a successful petition and to effectively defend against a petition before and after institution.

W. Todd Baker

Lecture Topics
[Total time 03:02:01]

Segments with an asterisk (*) are available only with the purchase of the entire program.

  • Ethics in the PTO [01:02:48]
    Robert C. Faber
  • Subject Matter Eligibility after Mayo/Alice and Latest Federal Circuit Decisions and USPTO Guidance [01:01:05]
    Michael P. Dunnam, Jay P. Lessler
  • Lessons Learned from Four Years of Post-Grant Proceedings [00:58:08]
    W. Todd Baker

The purchase price of this Web Program includes the following articles from the Course Handbook available online:


  • Conflicts of Interest in Patent Acquisition and Patent Litigation Representation (April 28, 2016)
    Robert C. Faber
  • Prosecution Ethics, Including Therasense v. Becton Dickinson (April 28, 2016)
    Robert C. Faber
  • Patentable Eligibility of Nature-Based Products as Analyzed by the USPTO
    Jay P. Lessler
  • Protection of Computer Implemented Inventions Under the USPTO’s July 2015 Update to December 2014 Interim Eligibility Guidance
    Michael P. Dunnam
  • Post-Grant Proceedings at the USPTO: Prefiling Considerations and Effectively Defending Against a Petition, Excerpts from Chapters 2–5 of Practising Law Institute, Post-Grant Proceedings Before the Patent Trial and Appeal Board (October 2016)
    W. Todd Baker

Presentation Material


  • Therasense, Inc. v. Becton Dickinson & Co., 99 U.S.P.Q. 2d 1065 (May 2011)
    Robert C. Faber
  • Protection of Computer Implemented Inventions After Alice
    Michael P. Dunnam
  • Patentable Subject Matter in the Life Sciences
    Jay P. Lessler
  • Post Grant Proceedings in the U.S.
    W. Todd Baker
Co-Chair(s)
Jay P. Lessler ~ Blank Rome LLP
Kenneth N. Nigon ~ Schwegman Lundberg & Woessner, P.A.
Speaker(s)
Cheryl H. Agris, Ph.D. ~ Agris & von Natzmer, LLP
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 ~ Baker & Hostetler LLP
Dianna G. El Hioum ~ Merchant & Gould P.C.
Robert C. Faber ~ Ostrolenk Faber LLP
Adda C. Gogoris ~ Hueschen and Sage, PLLC
Deborah L. Lu, Ph.D. ~ Vedder Price P.C.
Keith D. MacMillan ~ Director (Counsel), Legal, Merck & Co
Ann M. McCrackin ~ Schwegman Lundberg & Woessner, P.A.
Rebecca Goldman Rudich ~ Meunier Carlin & Curfman LLC
Robert D. Schaffer ~ Law Office of Robert D. Schaffer
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PLI’s live and on-demand webcasts are single-user license products intended for an individual registrant only. Credit will be issued only to the individual registered.


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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 on-demand web programs can be used to fulfill the requirements for New York newly admitted attorneys. Only professional practice and law practice management credits may be earned via transitional on-demand web programs. Ethics and skills credits may not be earned via on-demand web programs.

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South Carolina:  PLI’s on-demand web programs qualify as “alternatively delivered” credit. Attorneys are limited to 6 credits of alternatively delivered programs per reporting period.

Tennessee:  PLI’s on-demand web programs qualify as “distance learning” credit. Attorneys are limited to 8 credits of distance learning per reporting period.

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 on-demand web programs qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s on-demand web programs qualify as “self-study” credit. Attorneys are limited to 10 credits of self-study per reporting period.

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 on-demand web programs qualify as “pre-recorded” credit. Attorneys are limited to 8 credits of pre-recorded programs per reporting period.

Washington:  PLI’s on-demand web programs qualify as “A/V” credit. Attorneys are limited to 22.5 credits of A/V programs per reporting period.

West Virginia:  PLI’s on-demand web programs qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

Wisconsin:  PLI’s on-demand web programs qualify as “repeated, on-demand” credit. Attorneys are limited to 15 credits of repeated, on-demand programs per reporting period. No ethics credits can be earned via on-demand web programs.

Wyoming:  PLI’s on-demand web programs qualify as “self-study” credit. Attorneys are limited to 6 credits of self-study per reporting period.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s on-demand web programs are not eligible for CPD-BC credit unless viewed with at least one other attorney or an articled student. In this case, the credit must be recorded as a “study group.”

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Quebec (CPD-QC):  PLI’s on-demand web programs can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s on-demand web programs are not approved for CPD-HK credit.

United Kingdom (CPD-UK):  PLI’s on-demand web programs can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s on-demand web programs may fulfill Australia’s CPD requirements. Credit limits for on-demand web programs vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.


Other Credit Types

CPE Credit (NASBA):  Select on-demand web programs qualify as “QAS Self-Study” credit. 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 on-demand web programs 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 on-demand web programs 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 on-demand web programs may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s on-demand web programs may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s on-demand web programs qualify as "self-paced" credit. SHRM professionals are limited to 30 credits of self-paced programs per recertification period.

Compliance Certification Board (CCB):  PLI’s on-demand web programs qualify as “self-study” credit. Candidates are limited to 10 self-study credits per 12-month period, and certification holders are limited to 20 self-study credits per 2-year renewal period.

Certified Anti-Money Laundering Specialists Certification (CAMS):  PLI’s on-demand web programs are not approved for CAMS credit.

New York State Social Worker Continuing Education (SW CPE):  PLI’s on-demand web programs are not approved for SW CPE credit.

American Bankers Association Professional Certification (ABA):  PLI’s on-demand web programs may fulfill ABA credit requirements.

 

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