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US Patent Practice Training Course
What all European patent attorneys need to know - an intensive and highly interactive two-day seminar including discussions on US patent law and strategies and tactics for patent prosecution at the US Patent Office
Details
Course overview
Key topics covered:
- Legal framework
- Claim construction
- US patent prosecution practice and procedure
- The written description, enablement and best mode requirements
- Definiteness
- Statutory subject matter
- Novelty and prior art
- Obviousness
- Provisional and continuing applications
- Restriction practice and obviousness
- Type double patenting
- USPTO programs
- Patent Law Treaty implementation
- Duty of candor
- Infringement
- Patent litigation and damages
Why you should attend
The area of US patent practice can be complex and confusing. Are you up to date with the latest court decisions and best practice?
This highly interactive seminar will give you a comprehensive understanding of the US patent system and enable you to work more effectively with your US counterparts. It will highlight the important differences between US and European patent practice and provide you with the opportunity for in-depth discussions about prosecution practice and procedure throughout the two days. The programme will cover important tactics to get the most out of your prosecution dollar, and provide lots of claim drafting tips to give your application a solid footing for US prosecution and enforcement.
This event will bring you right up to date on the latest legislative changes under the America Invents Act (AIA), as well as all the recent and pending US Supreme and other court decisions of importance. You will also get to grips with current happenings in the USPTO that could impact on your role.
This is a fantastic opportunity to take full advantage of the open seminar environment that this event offers. With a high degree of interaction with the expert trainers as well as other participants, this is a great forum for discussing your particular questions and concerns. Offering a wide-ranging and detailed understanding, this seminar covers what every European patent practitioner should know about US patent practice.
Who should attend?
- Corporate patent counsel
- Patent attorneys from corporate and private practice
- Intellectual property consultants
- Patent managers and engineers
- Company legal advisers
- All those involved with patent protection in the United States
Accreditation
This seminar merits 12.5 hours under the UK Solicitors Regulatory Authority self accreditation scheme (refg. CJA/MAFO) and may also be relevant training under the IPREG CPD self accreditation scheme.
Programme
Legal framework
- Statutes and rules
- Courts and agencies
- Requirements for patentability
Claim construction
- Phillips – broad multifaceted inquiry
- Claim construction rules and guidelines
- Claim construction in the USPTO
US patent prosecution – general flow of events
Written description
- ‘Possession’ of claimed invention
- Ariad – increased focus on what inventors actually did
- Written description guidelines
- Negative limitations
Enablement
- Wands factors – to show whether the amount of experimentation necessary would be ‘undue’
- Interplay with written description requirement
Best mode
- Effect of the AIA
Definiteness
- Nautilus – the ‘reasonable certainty’ standard
- USPTO practice
Means-plus-function claiming
Statutory subject matter
- Supreme Court jurisprudence
- USPTO guidance
- Court of Appeal
Utility
- Impossibility
- Judicial interpretation
Patent Law Treaty implementation
Novelty and prior art
- Anticipation
- Pre-AIA – ‘first to invent’
- Post-AIA – ‘first to file’
Obviousness
- Graham and KSR
- USPTO practice – prima facie obviousness
- USPTO KSR guidelines
- Method claims
Provisional applications
- Pre-AIA vs post-AIA
Continuing applications
- Continuations, divisionals, continuations-in-part
Restriction practice
- Restriction requirement
- Restriction vs Election of Species
- Rejoinder
Patent term and PTA
Obviousness – type double patenting
- Gilead cases
- Terminal disclaimers
USPTO programs
- Terminal disclaimers
Patent Law Treaty implementation
Obviousness – type double patenting (continued)
- Accelerated examination, track one, patent prosecution highway
- First action interview, after-final consideration, pre-appeal brief request for review pilot programs
Duty of candor
- Citation of references
- Inequitable conduct
Inventorship
- Conception
- Joint inventorship
- Interference practice
- Derivation actions
Post-issuance practice
- Re-examination and re-issue
- Inter partes review
- Post-grant review
- Covered business method review
- Supplemental examination
- Certificates of correction
Infringement
- Direct infringement
- Contributory infringement and inducement
- Extraterritorial infringement
- Exhaustion
Doctrine of equivalents
- Function/way/result test
- Festo – prosecution history estoppel
- Licensing
Willfulness
- Opinions
Declaratory judgment
- Burdens of proof
Patent litigation and damages
- Remedies
- Entire market value
- Injunctive relief
Presenters
James Suggs (More...)
James V. Suggs is a partner in the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff LLP, located in Chicago, where he practices patent law and serves as Chair of the firm’s Chemical Practice Group. He applies his broad technical experience in a wide variety of chemical, polymer, materials science, pharmaceutical, optical, photonic, semiconductor and related technologies. He handles all facets of patent law, with an especial focus in patent procurement, strategic counseling, freedom-to-operate and due diligence opinions.
He also has an active inter partes review practice. His litigation experience includes federal district court and appellate practice as well as advocacy in forums such as the International Trade Commission, and spans a diverse range of technologies. He has experience with all kinds of clients, from large multinational corporations, to science-based startups, to academic research institutions, and works with law firms in Europe and worldwide to successfully prosecute their applications at the USPTO.
Nicole Reifman (More...)
Nicole Reifman is a partner with McDonnell Boehnen Hulbert & Berghoff LLP, Chicago where she has gained diverse experience in obtaining, evaluating and enforcing intellectual property. She has experience in all phases of patent preparation and prosecution, and concentrates in representing clients in the mechanical and electrical arts, including drive train systems, medical devices, electromechanical, telecommunications and material sciences matters. She also has experience in all phases of patent litigation.
She provides counselling regarding the procurement, enforcement, and licensing of intellectual property rights, including trademark, trade secret and copyright issues. She actively manages trademark portfolios and develops brand building and protection strategies for her clients. She is also the Recent Developments Editor of the University of Illinois Journal of Law, Technology, and Policy.
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1-2 Dec 2021 Live webinar |
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1-2 Dec 2021 Live webinar |
GBP 1,099 899 EUR 1,579 1,299 USD 1,786 1,474 Until 27 Oct* |
Enrol now
to attend Live webinar |
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1-2 Mar 2022 Face-to-face, (venue not yet confirmed) |
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1-2 Mar 2022 Face-to-face (venue not yet confirmed) |
GBP 1,299 1,099 EUR 1,819 1,539 USD 2,026 1,714 Until 25 Jan 22* |
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to attend Face-to-face (venue not yet confirmed) |
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8-9 Jun 2022 Live webinar |
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8-9 Jun 2022 Live webinar |
GBP 1,099 899 EUR 1,579 1,299 USD 1,786 1,474 Until 4 May 22* |
Enrol now
to attend Live webinar |
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15-16 Dec 2022 Live webinar |
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15-16 Dec 2022 Live webinar |
GBP 1,099 899 EUR 1,579 1,299 USD 1,786 1,474 Until 10 Nov 22* |
Enrol now
to attend Live webinar |
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Learn more about our face-to-face and webinar training formats.
* Note the early booking discount cannot be combined with any other offers or promotional code