Course overview
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 training course 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.
The training course covers important tactics to get the most out of your prosecution dollar, and provides lots of claim drafting tips to give your application a solid footing for US prosecution and enforcement.
This pracxtical training course 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.
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
The balanced mix of theory, discussion and examples that the expert trainers use will give you a greater understanding of the cornerstones of US patent law and the main differences between US and EP patent practice.
The training course will also give you the opportunity to ask questions and discuss your real-life challenges with the expert trainers.
CPD Hours: 12
Course Content
- Day 1
- Legal framework
- Claim construction
- US patent prosecution - general flow of events
- Written description
- Enablement
- Best mode
- Day 2
- Definiteness
- Means-plus-function claiming
- Statutory subject matter
- Utility
- Patent Law Treaty implementation
- Novelty and prior art
- Day 3
- Obviousness
- Provisional applications
- Continuing applications
- Day 4
- Restriction practice
- Patent term and PTA
- Obviousness - type double patenting
- USPTO programs
- Patent Law Treaty implementation
- Obviousness - type double patenting (continued)
- Duty of candor
- Inventorship
- Post-issuance practice
- Infringement
- Doctrine of equivalents
- Willfulness
- Declaratory judgment
- Patent litigation and damages
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.
Nicole Reifman
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.
