Fundamentals of Patent Prosecution 2013: A Boot Camp for Claim Drafting & Amendment Writing

May 14-16, 2013 | Chicago

MBHB Partner Dr. Kevin E. Noonan is a featured presenter at this three-day seminar. He is the featured presenter for the following two programs.

        Tuesday, May 14 | 9:00-9:15 a.m.

        Program Overview

        A review of the three-day schedule.

        Tuesday, May 14 | 9:15-10:15 a.m.

        Taking Invention Disclosures

This segment will offer an explanation on how to take an effective invention disclosure. It will discuss the manners to determine inventorship, ethical obligations related to who the client is and the prior art known by the inventor or others, exploring on-sale bar issues and other common pitfalls in inventor interviews (e.g. explaining best mode and other 112 requirements to the inventor).

MBHB Partner Dr. Donald Zuhn is a featured presenter at this three-day seminar. He is the featured presenter for the following program.

        Tuesday, May 14 | 10:15-11:15 a.m.

        Overview of Claim Drafting and Preparation of Patent Application

This presentation focuses on analyzing the invention disclosure, preparing drawings and claims, choosing embodiments, and preparing the specification and filing the patent application.

Why Individuals Should Attend the Three-Day Seminar

This program is directed to patent prosecuting and litigating attorneys and patent agents with or without a Patent Office registration number or little patent experience. It will focus on teaching the basics of claim drafting, patent application preparation and prosecution, as well as a review of recent developments in the law. A litigator’s perspective is presented to show how drafting and prosecution can influence the development, and often the outcome, of subsequent patent litigation. The clinics offer a unique supplement to the kind of hands-on mentoring that senior attorneys are hard-pressed to provide to less-experienced attorneys and agents.

What Attendees Will Learn

This three-day program will feature lectures each morning, followed by small clinic sessions in the afternoon. Both the lecture sessions and the clinics will follow the patent application process – from invention disclosure and patent preparation (Day 1), through prosecution and issuance (Day 2) to litigation/opinion drafting (Day 3).

Homework is different for each program and is specially designed to complement the Chicago, New York City and San Francisco programs. Homework must be completed and submitted upon registering on-site at the program. More information about the homework will be made available online at a later date.

The lectures are designed to provide a review of the patent preparation and prosecution process and explain:

  • How to decide what elements of the invention should be included in the patent
  • How to prosecute an application to result in allowance of an enforceable patent
  • How to interview an Examiner
  • How to use reissues, reexamination supplemental examinations and other post-issuance proceedings
  • How to anticipate patent litigation issues during the patent prosecution process
  • How to approach patent opinion drafting


Special Features

  • Morning lectures on critical patent application topics
  • One-of-a-kind, small group clinics with experienced patent prosecutors to develop and polish patent writing skills


Who Should Attend

Patent attorneys, patent agents, technical advisors and patent liaisons with no or very little patent prosecution experience will benefit from this program.

Sponsored by: Practising Law Institute (PLI)

Register online at