2-Hour Program

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Why You Should Attend

This program contains recorded selections of plenary sessions from the annual Advanced Patent Prosecution Workshop 2018 New York City program. Topics include ethics in the PTO, a live demonstration of a WebEx Examiner interview, everything you want to know about the patent office, and lessons learned from six years of post-grant proceedings. Discussions will include practical techniques for avoiding prosecution pitfalls and working with the USPTO 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.


Topics Include

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


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 between practitioners and examiners.  This segment will include a live demonstration of a WebEx interview showing how to use the tools available to practitioners including assessing the examiner’s demeanor, sharing screens, annotating the shared screens, and sharing files.

Knowing, and working with the constraints on examiners can make prosecution more effective.  This session will also discuss: the structure of the examining corps and how to identify and work with examiners at different training levels; the count system, including “count Monday”; when to use the Ombudsman; and when to contact the examiner’s supervisor or the Group Director.

Jay P. Lessler, Kenneth N. Nigon


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


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.

Credit Details