Course overview
The United States remains one of the world's most important and commercially significant patent jurisdictions. However, US patent law continues to evolve rapidly, creating challenges for patent attorneys, in-house counsel and IP professionals responsible for protecting innovation globally.
This comprehensive and highly practical training course provides a detailed understanding of modern US patent practice, prosecution strategy and enforcement. Delegates will gain valuable insight into the latest developments at the USPTO, key Federal Circuit and Supreme Court decisions, and emerging trends affecting patentability, claim drafting, prosecution and post-grant proceedings.
The course will explain the critical differences between US and European patent practice and provide practical guidance on drafting and prosecuting stronger US patent applications. Particular attention will be given to subject matter eligibility, enablement, written description requirements, restriction practice, continuation practice, PTAB proceedings and recent developments impacting software, AI and technology-based inventions.
Attendees will learn how to navigate the US patent system more effectively, maximise patent value, reduce prosecution risk and work more efficiently with US counsel and inventors.
Key topics covered:
- Legal framework
- Claim construction and drafting
- US patent prosecution practice and procedure
- Written description and enablement
- Alice and its continuing impact on subject matter eligibility
- Software
- AI-assisted inventions
- Novelty and prior art
- Obviousness
- Functional claiming
- Method claims
- Provisional and continuing applications
- Restriction practice
- Current PTAB trends
- Inventorship and ownership
- Direct and indirect infringement
- Licensing considerations
- Emerging USPTO initiatives
- International developments impacting US practice
Through practical examples, case studies and interactive discussions, delegates will gain the knowledge and confidence needed to develop effective US patent strategies in an increasingly complex legal environment.
This training course will also give you the opportunity to ask questions and discuss your real-life challenges with the expert trainer.
CPD Hours: 12
Course Content
- Day 1
- Module 1: Foundations of US Patent Practice
- Overview of the US patent system
- Claim construction and drafting for success
- Day 2
- Module 2: Patentability and prosecution strategy
- Written description and enablement
- Subject matter eligibility
- Novelty and prior art
- Day 3
- Module 3: Building stronger US patent portfolios
- Obviousness
- Functional claiming
- Method claims
- Strategic filing approaches
- Restriction practice
- Day 4
- Module 4: PTAB, enforcement and emerging issues
- Post grant challenges
- Patent term and portfolio management
- Inventorship and ownership
- Enforcement and litigation
- Future trends
Speakers
James Suggs
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.
Who Should Attend
Who should attend?
This training course has been specially designed for:
- Corporate patent counsel
- Patent attorneys from in-house and private practice
- European patent lawyers
- UK patent lawyers
- US patent attorneys
- Patent managers
- Patent engineers
- IP directors
- Technology transfer professionals
- Intellectual property consultants
- R&D managers
- Patent analysts, patent search and information specialists
- Technology lawyers
- All those involved with patent filings and prosecution in the United States
