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Advanced Patent Prosecution Workshop 2014: Claim Drafting & Amendment Writing

September 11-12, 20149:00 am - 4:30 pm

Sept. 11-12, 2014 | Chicago

MBHB Partners Dr. Kevin E. Noonan, Dr. Donald Zuhn, Jr., Bradley Hulbert, Thomas Wettermann and Joseph Herndon are featured presenters in this event as detailed below.


Why You Should Attend


In this advanced two-day program, you will have a unique opportunity to receive hands-on drafting experience under the guidance of experienced patent prosecutors. By working in small technologically-distinct groups, you will receive individualized feedback on claim drafting and amendment writing skills, as well as learn practical techniques for avoiding prosecution pitfalls. Guidance will be provided on the America Invents Act and its implementation by the Patent and Trademark Office, including the new post-grant review and inter partes review systems. Course material will include sample problems and model solutions.


Structure of the Programs


The Chicago Workshops are organized into four technology sections: Biotechnology, Chemical/Pharmaceutical, Electromechanical and Electronics/Computers. Enrollment in these sections is limited, and two or three senior patent attorneys will lead each section. 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 the homework will be made available online at a later date.  


Who Should Attend


This program is designed for private or corporate practitioners with patent experience who wish to improve their general claim drafting and amendment writing skills. Registrants will have the opportunity to concentrate for two days on the specialized skills required in their technological area.


September 11: 9:00 a.m. – 4:30 p.m.


Registrants will break out into four separate groups: Biotechnology, Chemical/Pharmaceutical, Electromechanical, and Electronics/Computers.


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 USC §112, as well as practical tips for ensuring the specification is truly a primary source of claim interpretation.


Biotechnology – Techniques for preparing a specification which will meet the utility, written description and enablement requirements, as well as obviousness issues raised by KSR, Ex parte Kubin, and the PTO obviousness guidelines, will be discussed. Requirements for submission of sequence listings and biological deposits, and tips for avoiding inequitable conduct issues and overly limited definitions and disclaimers will also be discussed.


Kevin E. Noonan, Ph.D., Donald L. Zuhn, Jr., Ph.D.


Electromechanical – Discussions will include post-KSR decisions (Wyers, Schwemberger, Tokai Corp.) and the characterization of the problem to be solved in the specification; the seminal Federal Circuit cases (Gentry Gallery, Scimed, Tronzo) and the recent Federal Circuit cases concerning interpretations of specifications that limit the scope of the invention (Arlington Industries, Retractable Technologies, Laryngeal Mask Co.); and the impact on the written description and enablement requirements when limitations are imported from the specification (Lizardtech, Atlantic Research, Crown Packaging). Tips will be provided to draft specifications that support broad claims and to avoid unwanted limitations.


Bradley J. Hulbert, Thomas E. Wettermann


Electronics/Computers – Discussions will include techniques for preparing patent applications for electronic and computer inventions in view of the 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 BPAI, including KSR, Bilski, CLS, Ariad and Therasense. The presentation provides practical guidelines for drafting patent specifications to support broad claims, to avoid creating specification disclaimer and to avoid Best Mode problems.


Joseph A. Herndon


 


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 CAFC 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 (DNA and RNA), proteins, antibodies, nucleic acid vectors, and transgenic organisms, while satisfying the written description and enablement requirements, will be discussed.


Kevin E. Noonan, Ph.D., Donald L. Zuhn, Jr., Ph.D.


Electromechanical – The author of PLI’s Faber on Mechanics of Patent Claim Drafting will discuss the requirements of the USPTO and precedents of the Federal Circuit as applied to the mechanical and electrical arts, and will include observations as to what experienced practitioners have learned and put into practice to write what may be viewed as good claim form.


Bradley J. Hulbert, Thomas E. Wettermann


Electronics/Computers – Advanced rules of claim drafting are discussed, including electronic circuit and hardware claims, claims for an interface, software claims, computer-readable medium claims, data structured claims, API and protocol claims, and method of doing business claims.


Joseph A. Herndon


Afternoon Session: 1:45 p.m. – 4:30 p.m.


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: Kevin E. Noonan, Ph.D., Donald L. Zuhn, Jr., Ph.D.


Electromechanical: Bradley J. Hulbert, Thomas E. Wettermann


Electronics/Computers: Joseph A. Herndon


 


September 12: 9:00 a.m. – 4:30 p.m.


Morning Session: 9:00 a.m. – 12:30 p.m.


9:45 Prior Art Under the America Invents Act: How the America Invents Act and Patent Law Treaty Affect Patent Prosecution


The new novelty and obviousness statutes created by the America Invents Act, and the PTO’s guidelines for their implementation will be discussed. The presentation will provide an easy-to-understand framework as to what constitutes prior art (such as public uses, sales, or “otherwise available to the public”) and the exceptions to prior art, such as the one year grace period, and common ownership of inventions created under joint research agreements.


Kevin E. Noonan, Ph.D., Donald L. Zuhn, Jr., Ph.D.


Registrants will break out into four separate groups: Biotechnology; Chemical/Pharmaceutical; Electromechanical; and, Electronics/Computers.


10:30 Concurrent Sessions III


Advanced Patent Prosecution Issues


Concurrent lectures specific to each technology will cover advanced issues, including post-Festo decisions and strategies for avoiding prosecution history estoppel, affidavits under rules 131 and 132, compliance with the duty of disclosure, performing Examiner interviews, requesting pre-appeal conferences, and accelerated examination.


Biotechnology – The discussion will cover techniques for addressing obviousness rejections in view of Ex parte Kubin, KSR, and the PTO obviousness guidelines, responding to restriction requirements and written description and enablement rejections, minimizing prosecution history estoppel when submitting arguments and amendments, proper drafting of affidavits, how and when to perform interviews, and complying with the duty of disclosure requirement.


Kevin E. Noonan, Ph.D., Donald L. Zuhn, Jr., Ph.D.


Electromechanical – The discussion will cover the use of means-plus-function claims, how to decide whether to amend or not amend claims, and how to structure patentability arguments to gain allowance without undue estoppels.


Bradley J. Hulbert, Thomas E. Wettermann


Electronics/Computers – The discussion will address techniques for challenging and defending patent applications under the America Invents Act, accelerating examination, minimizing or avoiding prosecution history estoppel, maximizing results of examiner interviews, minimizing prosecution delays, overcoming obviousness (Section 103) rejections and subject matter Subject 101) rejections, determining when to appeal, and preparing applications for appeal.


Joseph A. Herndon


11:30 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: Kevin E. Noonan, Ph.D., Donald L. Zuhn, Jr., Ph.D.


Electromechanical: Bradley J. Hulbert, Thomas E. Wettermann


Electronics/Computers: Joseph A. Herndon


3:30 Roundtable Discussions and Wrap-Up


The faculty will discuss USPTO trends across all technology areas such as allowance rates, pendency, length of time to first office action, etc., and will provide tips and recommend strategies for effectively prosecuting applications in view of these trends.


4:30 Adjourn


Sponsored by: Practising Law Institute (PLI) 

Register online here