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US Patent Practice

Management Forum
Course summary
2 days
1,299 GBP excl. VAT
English
Open / Scheduled
Next available date: 05/12/2019 - London
Course Dates
London
05/12/2019   (English)
1,299 GBP
11/06/2020   (English)
1,299 GBP
03/12/2020   (English)

US Patent Practice

Course Overview

KEY TOPICS TO BE COVERED AT THIS SEMINAR

  • Legal framework
  • Claim construction
  • US patent prosecution practice and procedure
  • The written description, enablement and best mode requirements n 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 n 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 highlights the important differences between US and European patent practice and gives you the opportunity for in-depth discussions about prosecution practice and procedure throughout the two days. This programme will cover 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 seminar 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. Plus, get to grips with the 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

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

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.

Provider: Management Forum

Management Forum

Management Forum - Professional training courses for the Life Sciences and Intellectual Property Sectors

Management Forum is an internationally renowned training provider organising professional conferences, seminars and in-house courses for professionals and companies in the Life Sciences and Intellectual Property sectors. With their growing programme portfolio, training specialists at Management Forum aim to provide...


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Contact information for Management Forum

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Reviews by course attendees

Patrick John Couzens
(5)
Entertaining and interesting programme
Paul Van Helvert
(5)
Speakers were excellent
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