US Patent Practice - 2 Day Seminar (London, United Kingdom - December 3-4, 2020) - ResearchAndMarkets.com

The "US Patent Practice" conference has been added to ResearchAndMarkets.com's offering.

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

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.

Agenda:

Programme day one

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'

Programme day two

Novelty/prior art (if necessary)

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

Speakers:

Nicole Reifman

Partner

McDonnell Boehnen Hulbert & Berghoff LLP

James Suggs

Partner

McDonnell Boehnen Hulbert & Berghoff LLP

For more information about this conference visit https://www.researchandmarkets.com/r/9z5akf

View source version on businesswire.com: https://www.businesswire.com/news/home/20200305005596/en/