3-Hour Program

See Credit Details Below

Overview

Plenary Sessions recorded from Advanced Patent Prosecution Workshop 2019 New York

Why You Should Attend

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, and drafting effective Office Action responses.

What You Will Learn

Ethical Considerations in Patent Prosecution

This presentation will address ethical considerations for attorneys who are writing and filing patent applications with the USPTO.  Several important legal ethics issues will be covered that often arise when determining inventorship, filing Information Disclosure Statements, preparing assignments, managing IDS references, preparing certifications, clearing docket deadlines, running conflict checks, and more. The use of checklists to identify ethical problems before they arise will also be discussed. This presentation will cover the USPTO’s rules for professional conduct as defined in 37 C.F.R. § 11 as well as the practitioner's duty of candor and good faith in dealing with the USPTO under 37 C.F.R. § 1.56.

Mercedes K. Meyer

Patent Eligibility under Section 101 and Alice: Update on USPTO’s Latest Guidance and Recent Case Law

The Supreme Court has provided limited guidance in recent decisions, such as Bilski, Mayo, Myriad, and Alice, as to what subject matter is and is not patent eligible. The Federal Circuit and the USPTO through their decisions (such as Berkheimer) and guidance documents respectively have attempted to further elucidate the standard to be applied. Unfortunately, the standard for subject matter eligibility remains elusive and nebulous. This presentation will focus on the guide posts provided by the courts and the USPTO and minimizing the risks of patent ineligibility under §101.

Michael P. Dunnam, Jay P. Lessler

Prosecution Lessons Learned from Post-Grant Proceedings

AIA has ushered in a need for stronger, more durable patents equipped to withstand patentability challenges at the PTAB. This presentation will cover the basics of Inter Partes Review (IPR) proceedings and then take a deeper dive into (i) the mechanics and strategies for successfully filing a motion to amend and (ii) the change from broadest reasonable Interpretation standard to the Phillips claim interpretation standard used in district court and at the ITC. In order to increase the likelihood of success in IPR, techniques will also be discussed for developing a clear and comprehensive file history to strengthen patents during prosecution. As an adverse outcome in IPR not only weakens the targeted patent but its portfolio as well, the discussion will include tips for mitigating the effect of an IPR loss on pending continuations and reissue applications.     

W. Todd Baker

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; Michael P. Dunnam, Jay P. Lessler, Rebecca Goldman Rudich, Robert D. Schaffer

Special Feature

  • Earn one hour of Ethics credit!

Who Should Attend

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, and drafting effective Office Action responses.

Credit Details