Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing

May 10-12, 2016 | Chicago

Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing

Day One – May 10: 9:00 a.m. – 5:00 p.m. 

9:00 a.m.: Program Overview 
A review of the three-day schedule.

Dr. Kevin E. Noonan, Partner, MBHB 

9:15 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 Section 101 patent eligibility issues, 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).

Dr. Kevin E. Noonan, Partner, MBHB 

10:15 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.

Dr. Donald L. Zuhn, Jr., Partner, MBHB

Why You Should Attend

This program is directed to patent prosecuting and litigating attorneys and patent agents with or without a Patent Office registration number and with no or little patent experience. It will focus on teaching the basics of claim drafting, patent application preparation and prosecution, and will provide a review of recent developments in the law. A litigator’s perspective is included 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 You 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, issuance and beyond (Day 2) to litigation/opinion drafting (Day 3). Homework is different for each location and is specially designed to complement Chicago, New York City and San Francisco. Homework must be completed and submitted upon registering on-site at the program.

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

• How to decide which elements of the invention should be included in the patent application and which aspects should be featured in the claims
  
• How to prosecute an application to obtain allowance of an enforceable patent
  
• How to interview an Examiner
  
• How to use reissues, reexamination supplemental examinations, inter partes review 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 go over the homework and 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.