Spring Program IN PATENT LAW

Transcription

PATENT RESOURCES GROUP
®
IN PATENT
ANNUAL SPRING PROGRAM
Spring
LAW
O
PE $2 NL
R 0 Y
NI 9
G
Program
HT
!
Hyatt Regency Grand Cypress • Orlando, FL
April 12-18, 2015
The World’s BEST Patent Law Courses
and a Spectacular Venue!
• Choose from 15 advanced patent law courses, including 3 new courses.
See page 3.
• Take advantage of our amazing room rate, available only to PRG attendees!
• Enjoy all the amenities at this beautiful resort.
See page 36.
See page 36.
• Check out our 4 outstanding seminars at this Program, including 3 new seminars!
THE CHOICE
OF
EVERY GENERATION
OF
See page 38.
PATENT ATTORNEYS SINCE 1969.
Register now at www.patentresources.com
◆
PRG’s 2015 Annual Spring Program
—
in Patent Law
For over 45 years, Patent Resources Group has been the nation’s leading educator of patent
professionals, providing attorneys, agents, engineers, and scientists from around the world with
comprehensive courses and publications that set the industry standard for patent education.
WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN ORLANDO IN SPRING
2015? BECAUSE PRG’S ADVANCED COURSES PROVIDE AN EDUCATIONAL OPPORTUNITY
THAT YOU SIMPLY CAN'T GET AT ANY OTHER SINGLE PROGRAM. OUR COURSES:
•
Provide an amazing value – if you register for your Spring Program courses by March 2, 2015,
you'll pay the same tuition rates that we’ve been charging since 2005! And if you come to our programs
every year, you’ll continue to benefit from our special Loyalty Program discounts for our Advanced Courses
and our Seminar Series (see below).
•
Go beyond the basics, showing how to apply the law to real-world intellectual property issues and to
make calculated legal and business decisions.
•
Give you practical insights that you can apply immediately when you get back to the office.
•
Offer the CLE credits you need.
•
Are an investment in your practice or your company, increasing
both your ability to successfully prosecute patent law and the value you
bring to your employer.
•
Provide an unparalleled opportunity for networking and
exchanging ideas with our faculty and your fellow attendees.
•
Will arm you to deal with the complexities of the America
Invents Act – the final changes resulting from the America Invents Act
(AIA) took effect in March 2013. However, the effects of this landmark
legislation will be impacting all aspects of patent practice for years to come.
All of our courses have been updated as needed to reflect the ongoing
impacts of the AIA.
Register soon — spaces will fill quickly!
About PRG’s Loyalty Program
P
atent Resources Group's Loyalty Program provides preferential pricing at our Advanced Courses
Programs and at our new Seminar Series. If you were a paid attendee at any PRG course in 2014 or
already in 2015, you are automatically a loyalty member for 2015 and will be entitled to special pricing
when you attend any courses* at our 2015 Spring or Fall Advanced Courses Program or any of our 2015 Seminar
Series! And after being a paid attendee at any PRG course in 2015, you’ll automatically be eligible for Loyalty
Program benefits for the rest of 2015 and for 2016. If you didn't attend any PRG courses in 2014 or so far in
2015, your 2015 Loyalty Program benefits will kick in after your first 2015 course. So, if you sign up for multiple
courses at the Spring 2015 Advanced Courses program, you'll pay full price for the first course and get Loyalty
Program member pricing for the other courses. Register today and be part of the PRG Loyalty Program!
*Loyalty Program pricing does not apply to the Certified Patent Valuation Analyst course.
PRG — THE CHOICE OF EVERY GENERATION OF PATENT ATTORNEYS SINCE 1969.
2 www.patentresources.com
◆
APRIL 12-18, 2015
Three-Day Courses: April 12-14, 2015 (Sun-Tues)
Art & Science of Patent Searching — Patentability, Validity
& Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 4
Register by March 2, 2015
for Lowest Spring Tuition!
Faculty: Brian Thurmond and Jonathan Skovholt
Chemical Patent Practice
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8
Faculty: Tom Irving, Jill MacAlpine, Deborah Herzfeld, Kathryn Sanchez, and Julie Heinrich
Comprehensive PCT Practice: How to Master Its Challenges
.....................
10
Faculty: Carol Bidwell and T. David Reed
European Patent Practice:
What Every U.S. Practitioner Should Know GNEW COURSE!
...................
18
Faculty: Leythem Wall and Daryl Penny
Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman
Patent Infringement Litigation
...................................................
30
Faculty: Aaron Fahrenkrog, Jake Holdreith, Marla Butler, and Matthew McFarlane
Post-Grant Patent Practice: Review Proceedings and Reexamination
...........
32
Faculty: Kevin Laurence and Matthew Phillips
Software Patents After Alice: Procuring, Enforcing and CBMs . . . . . . . . . . . . . . . . . . . . . 34
Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan
Three-Day Courses: April 16-18, 2015 (Thurs-Sat)
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14
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16
Crafting and Drafting Winning Patents
Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris
“Designing Around” Valid U.S. Patents
Faculty: Patrick Burns, Patricia Prior, and Edward Manzo
Drafting Patent License Agreements
• 15 advanced patent law courses
are available for the 2015 Annual
Spring Advanced Courses Program.
• Tuition for each Spring three-day
course is $2,195 through
March 2, 2015 and $2,295 after
that date.
• Combined tuition for the Spring
Patent Searching Course and
Workshop is $2,590 through
March 2, 2015 and $2,690 after
that date.
• Tuition for the two-day course is
$2,910 and $3,205 if you plan to
take the CPVA exam; tuition is the
same regardless of registration date
and loyalty pricing does not apply.
Faculty: D. Patrick O'Reilly, Brian Kacedon, William Pratt, and Casey Dwyer
Federal Circuit Law (2013-2015)
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20
Faculty: Pete Peterson, Michelle Armond, James Barney, and Gene Spears
Hatch-Waxman and Biosimilars: A Total Immersion Course
Encompassing Strategies for Prosecution, FDA Regulation,
Post-Grant Challenge, Litigation and Appeal GNEW COURSE!
.................
24
Faculty: Janis Fraser, Terry Mahn, W. Chad Shear, and Dorothy Whelan
Patent Drafting & Prosecution Based on a Single EPO/USPTO Specification
....
• Don't finalize your Spring
Advanced Courses registration
without checking out our 2 oneday Seminars and 2 half-day
Seminars being offered on April 15.
See page 37 to register and
page 38 for details.
26
Faculty: Bradley Hulbert and David Meldrum
Two-Day Courses: April 16-17, 2015 (Thurs-Fri)
Certified Patent Valuation Analyst GNEW COURSE!
.............................
6
Faculty: David Wanetick
Offered in Partnership with the Business Development Academy
Please note that the faculty members listed for each course are subject to change prior to the actual course date.
www.patentresources.com 3
◆
Art and Science of Patent
Searching – Patentability,
Validity & Infringement
... And Optional Patent Searching Workshop
Projected State Bar CLE Credit:
15.0 Hours
Course Faculty • The faculty consists of patent searching and analysis leaders at Landon IP who have
expert search experience as attorneys, patent search instructors, and examiners with the U.S. Patent
and Trademark Office (USPTO).
Orlando, FL
April 12-14, 2015 (Sun-Tues)
Hyatt Regency Grand Cypress
8:15 a.m. - 11:30 a.m. and
1:30 pm. - 4:45 p.m. (Sun-Mon)
8:15 a.m. - 11:30 a.m. (Tues)
Optional Workshop
1:30 p.m. - 4:45 p.m. (Tues)
Registration deadline: March 20, 2015
(Register by March 2 for best tuition rates!)
Why Should You Take This Course?
The Patent Searching course presents
a systematic process for performing
prior art searches with greater efficiency
and precision. It is designed to benefit
a broad audience, including novice
searchers,
seasoned
patent
practitioners, and search professionals.
The course also provides unbiased,
detailed information concerning the
latest databases and tools of the trade.
Expert tips from search professionals are
provided to enable high-level patent
research through proper scoping,
structuring, and performance of the
search.
Patent practitioners will
recognize that a robust understanding
of the prior art is a vital part of the
patent process, particularly in view of
accelerated examination demands and
the America Invents Act.
BRIAN THURMOND
JONATHAN SKOVHOLT
LANDON IP, INC.
ALEXANDRIA, VIRGINIA
Course Description
T
his course comprehensively teaches how to conduct a professional patent search.
It provides direction for determining when a search is needed and what types and sources
of information should be searched in the process. Patent searching is both an art and a
science. Consequently, search capability improves with practice. But optimum practice requires a solid
foundation for those who seek to conduct searches accurately and efficiently. The course teaches
when, how, where and why to conduct a search and is appropriate for those who will conduct the
search or commission it.
Designed for patent attorneys and agents, inventors, paralegals and research managers, the course
and its materials will be understood by anyone from the inexperienced to advanced practitioners.
Unlike workshops that are taught by competing database providers, this global course is not tied to
a particular search engine, a database product or a patent information service. Instead, the instructors
teach skills that are applicable across databases, both proprietary and public, and without bias toward
the features of a particular search engine. Unique among its many features, the course provides a
comparison of the major patent search engines and teaches the strengths, weaknesses and benefits
of the database providers who provide them.
Comments from previous attendees:
• "I have taken dozens of courses over my career,
and this course was one of the most worthwhile."
—
Michael Wack
Biomet, Inc.
Fall 2014 attendee
• “I'm entirely new to this field. It was general enough,
but detailed enough, for a beginner like myself.”
• “Highly competent instructors.”
The curriculum and text were designed and
written by twelve practitioners: eight
experienced patent information specialists and
four former examiners with expertise in both
English and foreign language searching. The
curriculum reflects the combined expertise of
Landon IP, which is the only company that has
been performing searching and preliminary
examination of PCT applications for the USPTO
since 2005.
Upon completion of the course, the
attendee will have learned:
• How to approach a search in a systematic,
methodical and exhaustive way.
• How to properly scope the search before
◆
even beginning.
• How to carefully search by classification, text
query progression, and citations, knowing
the benefits and pitfalls of each.
• Both the major differences and subtle
nuances in conducting a patentability,
validity or infringement patent search.
• Issues unique to searching within specific
technical disciplines.
Course materials
The text for the course is Art & Science of
Patent Searching – Patentability, Validity &
Infringement, edited by Matthew Rodgers,
The
Long Nguyen and David Hunt.
thoroughness of the text will minimize the
need for note-taking at the program.
• Approaches to searching non-Englishlanguage patents and published applications.
Optional Patent
Searching Workshop
• Approaches
literature.
A patent search engine user account is
needed for the Workshop. Please contact PRG
if you need assistance in obtaining one.
to
searching
non-patent
• Approaches to reporting search results.
• Differences between the major patent
search engines and important considerations
in selecting an appropriate search tool.
• Ways to get high-level information from
patent search results.
• The basics of several peripheral topics
including the use of the USPTO search
templates, searching for accelerated
examination, and searching using industry
standards.
This Workshop is an optional add-on to the
Art and Science of Patent Searching course and
gives attendees the opportunity to practice
hands-on patent searching alongside the
course instructors. Attendees must bring their
own laptops as well as their own search engine
user accounts so that they will be able to
practice using familiar search tools. Wireless
internet access will be provided during the
Workshop.
The faculty will work with the attendees to
answer questions and provide guidance as they
execute their searches in real time. The
Workshop is structured to test each attendee’s
retention of the concepts covered in the course
as they put their training to use in several
sample search projects. Attendees will be
provided with multiple sample disclosures,
T
encompassing a wide variety of technologies,
on which they will base their search. The
informal, lecture-free setting will allow each
attendee to work independently, but in close
proximity to an instructor.
The instructors will be able to provide
assistance with any of the major patent search
engines. The attendees will be guided through
scoping the search, performing the search and
analyzing their results. Answer keys will be
provided at the end of the Workshop so that
participants may gauge their progress and have
a reference to use for additional practice
following the class.
Requirements and Prerequisites:
• Completion of the immediately preceding
Art and Science of Patent Searching course
• Important:
Wireless-enabled
laptop
computer (Internet Explorer or Firefox web
browser, and Microsoft Office package
recommended)
• Important: Patent search engine user
account (in an attempt to focus on course
concepts
and
high-level
searching
techniques, publicly available search engines
cannot be solely relied upon for the lab
portion of this course)
• Important: Unrestricted use of third-party
wireless connection (please verify with your
IT department that your security settings will
allow access to the wireless hub necessary
for the course). G
he resort's private 21-acre Lake Windsong is the perfect place to
enjoy water activities such as canoeing, kayaking, or paddleboating.
◆
Certified Patent
Valuation Analyst
14.0 Hours
Orlando, FL
April 16-17, 2015 (Thurs-Fri)
Offered in Partnership
with The Business
Development Academy
G NEW
COURSE
Course Faculty
Mr. Wanetick has more than 20 years of experience in company and intellectual property valuation, financial
modeling, strategic planning, and negotiation. He is recognized world-wide for his expertise in valuing
emerging technologies and intangible assets such as patents, trademarks, copyrights, contracts, earn-outs
and non-compete agreements. His clients include law firms; emerging, mid- and large-sized companies;
technology transfer offices; inventors; venture capitalists; and private equity firms.
8:15 a.m. – 12:00 p.m. and
1:30 p.m. – 5:15 p.m. (Thurs-Fri)
DAVID WANETICK
INCREMENTAL ADVANTAGE
PRINCETON, NJ
G NEW COURSE
We believe the next decade will
witness a surge in demand for analysts
who can value intangible assets such
as patents. Thus, The Business
Development Academy has developed
its Certified Patent Valuation Analyst
Program. The Certified Patent
Valuation Analyst (CPVA) curriculum is
designed to prepare financial analysts,
technology transfer professionals,
intellectual
property
managers,
licensing managers, inventors, patent
lawyers
and
other
business
development executives with the skill
set necessary to value patents.
Attendees who complete the 4 courses
comprising this program will achieve
designation as a Certified Patent
Valuation Analyst, which indicates that
you are one of those rare individuals
who has attained a high degree of
proficiency in the process of valuing
patents and emerging technologies.
Course Description
ou can't manage what you can't measure. You can't monetize what you can't value.
Numerous studies report that intangible assets represent at least 70% of corporate value.
The imperative of valuing patents has largely been met with anticipatory surrender on the
part of corporate managers. This is unfortunate as the indifference to valuing patents is hindering
the management and monetization of the largest category of corporate assets.
Y
The curriculum required to qualify for the CPVA designation is offered exclusively through The Business
Development Academy. The four sessions that comprise the curriculum are:
• Valuation of Emerging Technologies
• Calculating Damages Resulting from Patent Infringement
• Negotiating Licensing Agreements for Maximum Returns
• Advanced Patent Valuation
The first 3 sessions listed above will be taught over two days at this PRG Advanced Courses program.
The Advanced Patent Valuation Course is a webinar that you will take after the PRG program, for no
additional charge.
Together, these 4 sessions will:
• Provide an understanding of the importance of valuing patents and emerging technologies
• Give guidance on what can potentially impact the value of patents
• Demonstrate how to apply valuation methodologies to emerging technologies and patents
• Include the dissection of patents to ascertain whether they can withstand invalidity
challenges, whether they truly protect the invention, and to determine licensability
• Improve your negotiating skills and apply strategies to ensure you gain maximum returns
from your licensing efforts
• Evaluate damage theories and evaluate damages calculations
• Provide practical advice, useful reference material and worksheets that can be used after
the course.
Additional details about each of the 4 sessions are provided on the next page.
◆
Valuation of Emerging Technologies
This seminar takes an in depth review of
more than 20 valuation methodologies such as
the Cost, Income, Market, Monte Carlo, Real
Options, Reasonable Royalty, and Probability
Weighted Expected Return Methods as well as
Bayesian Analysis, Binomial Lattices and
Markov Chains.
This session also introduces you to the
Patent Valuation Gauntlet (PVG). In deriving
the value of a patent, PVG takes into account
commercial value, assertion value, blocking
value, cross-licensing value, reputational value
as well as patent invalidity risks and design
around risks. The PVG worksheet contains
more than 500 issues that should be
considered when calculating the value of a
patent.
Excel sheets with the more than 40
valuation methodologies are included with
your registration.
Calculating Damages Resulting from Patent
infringement
Numerous judicial rulings and the
proliferation of non-practicing entities
threatens patent value. On the other hand, the
value of patents can surge when sustaining
invalidity challenges. In addition to discussing
a host of creative damages theories, this
session will review basic tenets of patent
infringement such as:
• Reasonable royalties
• Lost profits
• Price erosion
• Market size
• Reputational damage
• Market spoilage
• Granting options to take a license
• Sponsored research
• Royalty stacking
• Sublicensing issues
• Fields of use
• Most favored nation licensing
• Managing litigation
• Royalty audits
• The 25% rule
Most live sessions feature a Negotiating
Battle™, whereby attendees participate in an
interactive simulated licensing negotiation.
• Cost of next best alternatives
Advanced Patent Valuation
• Running royalties vs. lump-sum payments
Tremendous value can be gained (or
squandered) through the drafting of patents.
The value of a promising technology can be
nullified through sloppy claims construction.
This webinar explains best practices for:
• The Georgia-Pacific factors
Negotiating Licensing Agreements for
Maximum Returns
You can gain (or lose) as much value by
negotiating licensing agreements over a three
month period as you can make during thirty
years of intense research. This session is
designed to enable you to maximize the value
from your licensing agreements. You will learn
when to use — and how to negotiate and
structure — the following licensing terms:
• Royalty rates
• Upfront payments and milestones
• Balancing broad versus narrow claims
• Getting the mix of independent and
dependent claims right
• Managing
examiners
interactions
with
patent
• electing and defining the most appropriate
terms
• Managing the pace of patent review G
S
ip a cool beverage on the Grand View Terrace,
overlooking the lush Florida surroundings.
◆
Chemical
Patent Practice
18.0 Hours
Course Faculty
The faculty has decades of collective experience across the complete spectrum of chemical practice.
(Including 2.0 Hours Legal Ethics)
Orlando, FL
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Sun-Tues)
TOM IRVING
JILL MACALPINE
DEBORAH HERZFELD
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
WASHINGTON, DC
JULIE HEINRICH
KATHRYN SANCHEZ
NOVA CHEMICALS, INC.
PITTSBURGH, PA
DUPONT
WILMINGTON, DE
Course Description
his up-to-the-minute course teaches the chemical patent practitioner how to use
fundamentally sound principles to prepare and prosecute a United States chemical patent
application in a conservative way, and in view of all of the opportunities and pitfalls afforded
by the AIA,to enhance such possibilities as:
T
Are you well-versed on how
chemical claims are constructed and
construed? Well enough to avoid an
overly narrow, often disastrous claim
construction in district court leading to
a royalty-free transfer of patented
technology to your competitor? Well
enough not to trip up on obviousness
in view of KSR? Well enough to also
withstand PTAB challenges, where
your claims will receive the broadest
reasonable interpretation? If you’d like
to answer these questions with a more
confident “yes” then you should
attend
our
highly-acclaimed,
comprehensive Chemical Patent
Practice course. Don’t fail your clients
or yourself in these tough economic
times – learn from those who do their
best to be state of the art.
• Obtaining claim construction appropriate to business objectives and with a view to
preempting potential issues in district court litigation and PTAB proceedings, taking into
account that the invalidity standards in district court are generally much tougher than the
unpatentability standards before PTAB;
• Surviving Festo and utilizing the doctrine of equivalents to the extent that the doctrine is
available;
• Generally destroying, not rebutting, a prima facie case of obviousness, while cognizant of
IPR and PGR considerations during ex parte prosecution where it could be desirable to
rebut obviousness, as well as § 112 enablement and written description rejections;
• Drafting claims that will be directly and literally infringed by competitors (each a single
actor/entity if possible) and “downstream” infringers;
• Minimizing opportunities for opponents to allege inequitable conduct based on either the
original prosecution or any post-grant prosecution/proceeding; and
• Understanding differences between pre-AIA and AIA U.S. patent law, and when each
applies.
For example, the rising tension between the
district courts and PTAB standards in claim
construction and the increasing pressure to
revisit the Cybor rule of de novo review of
district court claim construction on appeal,
now having been argued before the Supreme
Court in the Teva case, will bring important
claim
construction
developments
for
practitioners in the immediate future. For the
practitioner, the take-home message remains
to prosecute as if your life depended on literal
infringement and lay the groundwork in the
specification (the “single best guide” to the
meaning of a claim term) for the desired claim
construction(s) that will withstand both district
court and PTAB challenges.
This course, presented by an experienced
faculty, each with a significant depth of
experience,
suggests
many
practical
approaches with those objectives in mind. We
discuss how to establish patentability and
validity under § 103 in the post-KSR world,
where knowledge and direction equate to
power. Case studies, involving real U.S.
patents, PTAB post-grant proceeding
◆
institutions and final written decisions (FWDs),
and, to the extent available, Federal Circuit
review of the FWDs, will provide a framework
for creative thinking on the law of prima facie
obviousness, as well as obviousness in general.
We will look closely at the guidelines for “best
mode” disclosure from a substantive and
ethical point of view, particularly in view of
changes made in the AIA. In addition, we will
consider Federal Circuit inequitable conduct
decisions in the wake of the en banc
Therasense decision, many of which will be
reviewed for the lessons they provide to both
in-house and private practice lawyers. In fact,
the inequitable conduct and best mode
discussions provide the two hours of ethics CLE
that is otherwise sometimes hard to find,
particularly on substantive topics related to
your practice. The ethics discussion should be
from 1:30 to 3:30 p.m. on the second day (as
currently estimated), but rest assured that
those two hours will be taught at some point
during the course. The last day will include a
discussion of a hypothetical chemical patent
problem that synthesizes and reinforces the
teachings of the class.
The enactment of the AIA did not wipe the
patent law slate clean. Because of the way the
various effective date provisions activate and
apply, the “old” or pre-AIA law will be relevant
to practitioners, along with AIA, until at least
March 16, 2034! That’s right — practitioners
will have to be experts in both old and new
laws for at least about another 20 years! The
Chemical Patent Practice faculty has lectured
on the AIA extensively and has studied it
intensively in conjunction with people who
were instrumental in the drafting of the
legislation. The faculty will bring all of that
background to their presentations to you.
And do not be misled into thinking that this
course is applicable only to patent prosecutors.
The principles taught will greatly help those
involved with prelitigations, litigations, Orange
Book listings, due diligences and analysis of
third-party patents for validity, infringement,
and enforceability issues, as well as for
preparing IPR and/or PGR petitions and
defending the patent against them.
• “By far the best overall review of recent case law,
MPEP and practice that I have ever attended.”
— Juan Rodriguez,
Howard & Howard,
Fall 2014 attendee
• “Good overview and reminders of good practice
points. Great consolidation of information and
tips based on recent case law. Very current.”
Course Materials
The definitive treatise, Chemical Patent Law,
written and continually updated by the
Finnegan, Henderson, Farabow, Garrett &
Dunner faculty, with the invaluable assistance
of editor Stacy D. Lewis, will be provided to
attendees electronically. This treatise covers
virtually every situation that can arise in the
preparation and prosecution of a chemical
patent application. It will remain a valuable
resource long after the course.
The treatise underwent a complete overhaul
in the aftermath of the enactment of the AIA,
another overhaul in view of PTAB IPR and PGR
proceedings, and is updated several times each
year to provide completely updated materials
to the course attendees.
Although the treatise is of great value, the
faculty members have found that the best
vehicle for teaching is the use of slides, which
will be provided in hard copy to attendees on
the first day of class. The slides book will
contain ample room for note-taking and crossreferencing and, as such, will be a valuable
addition to your daily kit of chemical patent
practice tools. G
— Heather Gorman
Thomas, Kayden, Horstemeyer & Risley, LLP
April 2010 attendee
R
elax in a hammock
by Lake Windsong,
the resort's private lake.
◆
Comprehensive PCT Practice:
How to Master Its Challenges
15.0 Hours
Course Faculty • The two faculty members have extensive government and corporate experience in all
aspects of PCT matters.
Orlando, FL
8:15 a.m. - 11:30 a.m. and
1:30 pm. - 4:45 p.m. (Sun-Mon)
8:15 a.m. - 11:30 a.m. (Tues)
CAROL BIDWELL
T. DAVID REED
CONSULTANT ON PCT MATTERS FOR THE WORLD
INTELLECTUAL PROPERTY ORGANIZATION; FORMER SUPERVISOR
OF THE USPTO OFFICE OF PCT LEGAL ADMINISTRATION
CONSULTANT ON INTERNATIONAL PATENT PRACTICE SPECIALIZING IN PCT;
FORMER SENIOR PATENT ADVISOR, GLOBAL PATENT SERVICES, THE PROCTER
& GAMBLE COMPANY, CINCINNATI, OHIO
Course Description
ince coming into force in 1978, the Patent Cooperation Treaty (PCT) has established itself
as a valuable way for applicants to obtain patent protection in many countries around
the world. The number of PCT Contracting States is currently 146 and growing. PCT
members include the vast majority of industrialized, developing and emerging countries of the
world. The Comprehensive PCT course guides the attendees chronologically through the
international phase of the PCT and into the national phase before the national and regional
patent Offices of interest. The instructors present strategies for effective use of the PCT, the
benefits obtained and options available when using the PCT. In addition, the course covers the
numerous safeguards available for applicants, including the restoration of priority rights and
incorporation by reference.
S
Attendees will learn the benefits and
advantages of the Patent Cooperation
Treaty (PCT) procedure as well as the
numerous options and safeguards
available for applications filed under
the PCT. The Comprehensive PCT
course enumerates procedures and
strategies designed to obtain patent
protection for inventions in multiple
countries through the filing of a single
international application under the
Patent Cooperation Treaty. While a
basic working knowledge of the PCT is
useful when taking this course, it will
prove valuable to both new and
experienced users of the PCT.
The PCT allows applicants to secure a filing
date in all PCT Contracting States by filing a
single application in their home country and in
their home language. The PCT provides a
comprehensive search of the prior art and a
preliminary, nonbinding written opinion on the
novelty, inventive step (non-obviousness) and
industrial applicability (utility) of the claimed
invention. In addition, applicant has an
additional 18 months beyond the end of the
Paris Convention priority year to make final
decisions on where to seek patent protection.
The delay in the associated expenses of
national filings alone make the PCT a costeffective procedure and can result in a
significant cost saving by helping to avoid
unnecessary filings and/or allowing filings in
countries where commercial importance has
grown between international filing and
national phase entry.
By filing an international application, all PCT
Contracting States and four regional offices are
automatically designated and are available for
national phase entry later in the process.
Whether the international application is the
first filing or it claims priority to an earlier filing,
the applicant does not have to make the final
decision on where to seek patent protection
until 30 months from the earliest priority date.
The final decisions are based on the
information obtained in the international
search report and the international preliminary
report on patentability as well as information
obtained by the applicant regarding the
scientific status and commercial value of the
invention. In short, through using the PCT, the
applicant will have a much better idea of the
likelihood
of
obtaining
commercially
meaningful patent protection for the claimed
invention. In addition, the applicant will have
the opportunity to obtain additional search
results through the supplementary search
option as well as have the opportunity to
advance prosecution by using the optional
international
preliminary
examination
procedure.
Applicant can amend the
application and/or provide arguments for
◆
consideration by the examiner prior to the
issuance of the international preliminary report
on patentability (Chapter II of the PCT).
Depending on the International Search and
Preliminary Examining Authorities selected by
the applicant, certain national and regional
patent Offices (including the US) allow a
favorable PCT work product (for example,
preliminary
report
on
international
patentability) to be applicant’s “ticket” to
accelerated examination on their patent
prosecution highway.
This Comprehensive PCT course discusses: a)
when the use of the PCT is advantageous and
when it is not; b) the effects on patent term
based on the first (priority) application; c)
selection of international authorities under the
PCT for greatest advantage; d) the information
received by applicants during the PCT process;
e) entering the national phase; f) upcoming
changes in the PCT; g) use of PCT search and
examination results to utilize the Patent
Prosecution Highway; h) the effect of the
America Invents Act (AIA) on practice under
the PCT; plus a host of other PCT-related topics.
In addition, the course presents the growing
information available from the WIPO Internet
site via the PATENTSCOPE® search tool. The
Comprehensive PCT course includes a detailed
look at patent-related provisions of the Paris
Convention.
Comments from attendees of past PCT courses:
• “Excellent instructors - thorough coverage of
subject.”
• “The course materials are excellent. The lecturers
have much experience in PCT-related activities and
have the ability to explain that to a class.”
• “Outstanding speakers with practical experience.”
Course Materials
A comprehensive text is used in the course
presentation that includes detailed explanations
of the various topics and sample forms. G
N
eed a break from relaxing?
Challenge yourself on the
24-foot rock climbing wall.
◆
Crafting & Drafting
Winning Patents
15.0 Hours
Course Faculty
Collectively, over 75+ years of experience litigating, prosecuting and teaching about patents.
(Including 1.0 Hour Legal Ethics)
Orlando, FL
April 16-18, 2015 (Thurs-Sat)
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Thurs-Fri)
8:15 a.m. – 11:30 a.m. (Sat)
Learn the areas of chaos in Federal
Circuit jurisprudence of primary
concern to practitioners who prepare
and prosecute patents. The course will
focus on a series of cases where the
patent owner lost, not because of
what the litigators did, but because of
how the patent practitioner drafted
and prosecuted the application.
Compounding the problem is the time
pressure created by moving to a firstinventor-to-file system under the
America Invents Act (AIA) and the
anticipated increase in the filings of
provisional applications — with their
many traps for the unwary. The course
will teach you how to write provisional
applications and draft and prosecute
non-provisional patent applications to
avoid these pitfalls.
DALE LAZAR
PAUL ULRICH
JOHN TSAVARIS
DLA PIPER US LLP
RESTON, VA
DINSMORE & SHOHL LLP,
DAYTON, OH
KENYON & KENYON
NEW YORK, NY
Course Description
his Crafting & Drafting course marches to a special drummer and focuses on the end result
– producing a “winning patent” that will be held literally infringed and not invalid under
(sec)112(a), f/k/a/ (sec)112, para.1, despite the time pressure created by moving to a firstinventor-to-file system under the America Invents Act (AIA).
T
The Conundrum. Chaos now reigns supreme in Federal Circuit case law (and the judiciary of the U.S.
district courts have begun to say so openly). For example, the importation of claim limitations from
the specification into the claims – albeit under the rubric of “claim interpretation” – is now rampant,
rendering many patents virtually worthless. A case in point is C.R. Bard, Inc. v. United States Surgical
Corp., where the court imported the limitation “pleated” into a broad claim reciting a surgical mesh
plug used for hernia repair, relying heavily in doing so on the “Summary of the Invention” that
described a plug having pleats. The court repeatedly referenced the Summary of the Invention
throughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patent did
recite a pleated plug, without even mentioning, let alone reconciling, the “immutable” doctrine of
claim differentiation that should have sustained the broad claims.
Claim interpretation is only one chaos region. There are others where the Federal Circuit case law is
equally inconsistent, including the law concerning the written description requirement, means-plusfunction clauses, the doctrine of equivalents, and prosecution history estoppel.
This creates an immense dilemma for conscientious patent practitioners trying to write and prosecute
patent applications that will provide their clients with the patent protection they deserve. Which cases
should be relied on, and which should be ignored?
Answer to the Conundrum.
• “Practical advice for drafting enforceable patent
claims, sprinkled with supporting legal
authority.”
There is a sound basis for dealing with the
dilemma generated by the Federal Circuit! A
practical ex parte practice path is now in being
that navigates through the chaos. Its road sign
reads “LP-CD (Low Profile, Common
Denominator Practice)”. LP-CD, despite the
chaos it penetrates and traverses, is charted
clearly and boldly in this PRG course. Crafting
& Drafting Winning Patents was designed and
created by PRG’s Professors Paul Gardner and
Irving Kayton and enriched by the PRG course
faculty.
• “Spanning the gap between current Federal Circuit
law and actual, practical tips on how to incorporate
the latest law into successful prosecution practices.”
• “Good coverage of current law and potential
pitfalls associated with certain practices (I'm
planning to make changes to my practice with
regard to various pitfalls you have pointed out).”
◆
This course distills everything from the law
(and dicta) of the Federal Circuit and its
predecessor courts that has a material bearing
now, today, and in the foreseeable future, on
how we must successfully:
1. Prepare for drafting the application;
2. Design what must be included in, and
excluded from, the provisional application
and the nonprovisional application
specification and drawings and, very
importantly, in what form and format it
should be included;
3. Engage in claim drafting strategy designed
to result in literal infringement, recognizing
that this strategy must be taken into
account as a principal factor in the earlier
design of the specification;
4. Develop a protocol and a philosophy for
prosecuting the application that advance
and do not defeat the efforts in (1) through
(3); and
5. Balance the accomplishments of (1)
through (4) against, first, increased costs of
crafting and drafting that sometimes
accrue and, second, their effect on the
length of the patent term that will result,
and third, the time pressure created by
moving to a first-inventor-to-file system
under the AIA.
Y
Crafting & Drafting is not a survey course
covering the broad landscape of patent
prosecution or a workshop. Instead the course
drills deeply into the six specific areas of Federal
Circuit chaos that have most seriously and
frequently destroyed the value of patents. We
will focus on what we can do as patent
prosecutors to prepare and prosecute
applications that are immune from the chaos.
Crafting & Drafting will almost certainly
effect a change in your patent law life, because
the Federal Circuit has effectively (albeit
unwittingly) dictated that it be so.
It is noteworthy that many hundreds of
patents have already issued using the Crafting
& Drafting techniques set forth in this course
(several of which will be reviewed), with
beneficial effect in license and litigation
negotiations.
Legal ethics issues — including the recent
Therasense decision and its profound changes
to the law of inequitable conduct and duty of
disclosure — will be covered from 9:15-10:15
a.m. on the last day of the course, as currently
estimated.
Who Should Take This Course?
This course is for patent practitioners with a
minimum of two years of practice, and
preferably more. It is sufficiently sophisticated
for even the most experienced. The faculty
knows this to be true because the problems
and solutions about which they conferred and
debated in bringing this course to fruition
plumbed the depths of their combined patent
law knowledge, experience and ongoing
research and scholarship.
Beginning patent practitioners should look
forward to PRG’s three-day Workshop
designed specifically for them, The Winning
Patents Workshop. For details visit our website
at www.patentresources.com.
Course Materials
A printed set of lecture slides will be
provided to registrants at the course;
additionally, participants will receive electronic
access to the course text, Crafting & Drafting
Winning Patents. The textbook and slides are
constantly updated and revised to include
recent decisions and changes in the law. G
ou will never forget the wonders of nature
that surround you at this amazing resort.
◆
“Designing Around”
Valid U.S. Patents
15.0 Hours
Course Faculty • PRG has offered “Designing Around” Valid U.S. Patents for over 15 years, and it remains
one of our most popular courses.
Orlando, FL
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Thurs-Fri)
8:15 a.m. – 11:30 a.m. (Sat)
PATRICK BURNS
EDWARD MANZO
PATRICIA PRIOR
GREER, BURNS & CRAIN, LTD.
CHICAGO, IL
HUSCH BLACKWELL
CHICAGO, IL
GREER, BURNS & CRAIN, LTD.
CHICAGO, IL
Course Description
n Markman and Cybor, the Federal Circuit required district courts to construe claims as a
matter of law and decided to review claim construction de novo. The object was to make
claim construction predictable, so that claims would better perform their public notice
function. The result has been an unmitigated disaster, often (but not always) reading limitations
into the claims that the examiner did not require to establish patentability over the art of record.
In fact, the court has often overridden the examination process, undermining the public notice
function of claims ab initio. This course will explore the current condition of claim construction in
detail and explain how competitors can use it to their advantage, even when the claims on their
face are literally infringed. The course will also include an interactive presentation of Edward
Manzo’s The Claim Construction Game® lecture.
I
The Designing Around course distills
the patent infringement analysis into
comprehensive yet concise step-bystep checklists that can be used by
attorneys at all experience levels to
assist their clients to develop
competitive, noninfringing products.
• “Practical explanation of case law to apply to
patent drafting, infringement analysis and
opinion writing.”
• “The substance was excellent. Presentations
gave good overviews and the course books give
encyclopedic detail for topics of interest.”
• ”Well organized, very thorough, presenters all
know their stuff.”
Four cookbooks covering (1) literal
infringement, (2) infringement under the
doctrine of equivalents, (3) infringement of
means plus function claim elements, and (4)
prosecution history estoppel, are provided.
Using and following these cookbooks, which
distill opinions by the Federal Circuit and the
Supreme Court in cases from Pennwalt to Festo
IX, any patent practitioner can counsel his or
her client on how to “design around” the
patented invention with almost certain
impunity – a design that appropriates the
patented invention and that, prior to Pennwalt
and its progeny, would have been held an
infringement rather than the socially desirable
activity of “designing around.”
This course will show practitioners
representing potential infringers how to
counsel competitive product design under the
guidance of Federal Circuit and Supreme Court
cases, which will almost always be viewed as
effective “designing around.” How to conduct
litigation to achieve a happy ending for your
infringement-accused client will be set forth in
elegant simplicity.
Actual Demonstrations
To ensure no confusion on anyone’s part in
this exercise, the faculty and students will go
through several claim construction exercises
and compare their conclusions with the Federal
Circuit’s claim construction in actual cases. A
mock design around exercise will also be
presented. The demonstration considers client,
marketing and engineering perspectives, in
addition to legal analysis. To prepare for the
◆
exercises and demonstration, the course faculty
will illustrate the accused structures relative to
the claims in the landmark, no-infringementby-claim construction cases of Alloc and
Nystrom, the no-infringement-by-equivalents
cases of Slimfold, Laitram and London, and the
super landmark, no-equivalents-at-all afterprosecution-history-estoppel case of Festo IX.
These and other cases are presented in literal,
graphic clarity.
W
How to Draft Infringement
and Noninfringement Opinions
The effects of Seagate, the AIA, and Bard on
findings of willfulness, enhanced damages,
and fee awards will be discussed in detail. The
faculty also explains the substance and form
opinions should have to maximize their
effectiveness in litigation.
Course Materials
The two-volume text for “Designing
Around” Valid U.S. Patents is authored by the
distinguished course faculty, each of whom has
extensive successful litigation, prosecution and
counseling experience. Nothing like these
unique books exists anywhere else. G
hether you have a swim or just relax in the sun with a good book,
you will feel refreshed after spending time at the pool.
◆
Drafting Patent
License Agreements
Course Faculty • The faculty teaches by sharing decades of combined experience in licensing.
15.0 Hours
Orlando, FL
D. PATRICK O’REILLY
Licensing is a key strategy by which
companies realize significant value
from their patents and technology. The
ability to draft, negotiate and interpret
license agreements is a core skill for IP
attorneys and other professionals who
deal with licenses. This course provides
a comprehensive overview of key
licensing concepts, the drafting of key
clauses in a license agreement, and the
impact of related topics such as
competition law, export control law
and the Bayh-Dole Act. It is taught by
experienced license professionals with
an emphasis on practical considerations
and provides valuable insights and
discussion for both novices and more
advanced practitioners.
D. BRIAN KACEDON
WILLIAM PRATT
Course Description
T
his course and its text provide concrete drafting and negotiating advice with precise references
to existing law.
The course lays the groundwork for a clause-by-clause examination of all significant elements
of the patent licensing agreement. The practical questions always focused on are how and whether
each element is sufficient to serve the business needs of the parties while remaining legally viable.
The main components of typical licensing agreements, from the opening part through the execution
and authentication provisions, are examined in detail. Practical, hypothetical illustrative examples are
used, often in workshop form, with carefully crafted problem handouts distributed to the attendees
during the course.
Throughout the course, the faculty members emphasize achieving legally satisfactory drafting results
by recognizing the logical principles that underlie the job to be done. Sample forms are used to
explain the practical considerations upon which they are based. Law and precedent are presented in
terms that make clear the legal reasoning behind recommended drafting approaches.
• “This course provided a great overview of
licensing issues and anecdotal scenarios giving
rise to said issues.”
— Andrew Weber
Honigman Miller Schwartz and Cohn LLP
April 2012 attendee
• “I have been drafting license agreements for the
Federal government for 6 years, and this course
helped tie together everything I've learned in
this time.”
— Suzanne Seavello Shope
Centers for Disease Control & Prevention
April 2010 attendee
CASEY DWYER
WASHINGTON, DC
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Thurs-Fri)
8:15 a.m. – 11:30 a.m. (Sat)
• “The information is very practical and relevant
to the 'real world' problems encountered in
drafting and reviewing agreements.”
— Glenn Smith
Bausch & Lomb,
October 2008 attendee
This is a course for the craftsman. Both the
course and the text provide a solid basis for
responding to virtually every license drafting
problem that may arise. Even for the highly
experienced licensing lawyer, new insights may
be provided; at the very least, the course will
be a rich, comprehensive refresher. For the less
experienced licensing lawyer, it will open vistas,
both with respect to hidden problems and to
mechanisms for dealing with them.
◆
Legal ethics in license negotiations will be
presented during the afternoon session on Day
2 and in misuse issues during the morning
session on Day 3, as currently estimated.
Course Materials
The text for the course is the Seventh Edition
of the classic, Drafting Patent License
Agreements (BNA), by Brian G. Brunsvold, D.
E
Patrick O’Reilley and D. Brian Kacedon. The
thoroughness of the text and accompanying
slides will minimize the need for note-taking at
the program. Moreover, this Seventh Edition
includes a computer disk, which has a set of
form paragraphs that can be incorporated,
with careful editing, into a license agreement
to be prepared by the course attendee.
The hardcopy edition of the course text will
be given to each attendee at the program. The
volume containing the printed slides that will
be used throughout the lectures will also be
provided at the course; this volume will include
extensive license drafting workshop materials
and Justice Department licensing guidelines.
G
njoy the beautiful flowers, landscaping, and statues
along the resort's trails for walking, jogging, or biking.
◆
European Patent Practice – What
Every U.S. Practitioner Should Know
15.0 Hours
Orlando, FL
Course Faculty
Both faculty members for this course are European and Chartered UK Patent Attorneys. They have
experience in patent drafting, prosecution, opinions on infringement and validity, freedom-to-operate
analysis, and oppositions and appeals. Mr. Penny focuses on the physics, mechanical, and electrical
fields; Mr. Wall has particular expertise in the agrochemicals, alternative energy, biotechnology, chemical,
metallurgy, nanotechnology, oil and gas, pharmaceutical, and telecommunications industries.
G NEW
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Sun-Mon)
8:15 a.m. – 11:30 a.m. (Tues)
COURSE
DARYL PENNY
LEYTHAM WALL
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
LONDON, UK
G NEW COURSE
U.S. and European patent practice
differ in many ways. With global
patenting strategies, companies often
struggle to ensure consistency when
prosecuting applications to grant in
both jurisdictions. Using practical
examples, this course will highlight and
explain the differences from the
European perspective to give those
attending this course a better
understanding of the European system
and enable them to work more
effectively with their European
counterparts.
Course Description
hroughout the course, we will provide the latest state of European Patent Law, including the
most recent changes and decisions from the European Patent Office (EPO) and other Court
decisions of importance, as well as new and important developments in the European Union
(EU) Unitary Patent and Unified Patent Court Package. While discussing many aspects of European
practice, we shall continually sprinkle the discussions with specification and claim drafting tips that
will provide your applications with a solid footing for European prosecution and enforcement.
T
Among the topics to be discussed:
• An overview of the European Patent
Convention (EPC) and the national patent
system:
o requirements for a patent
o what is state of the art
o exclusions from patentability
o exceptions to patentability
o litigation across Europe
• Successful European claim drafting:
• Successful patent prosecution: Rules,
regulations, best practices including tools to
use and pitfalls to avoid for overcoming
substantive objections including:
o Novelty
o Inventive step
o Sufficiency
o Clarity
o Added Matter
o Comparison with US, obviousness vs
inventive step, added matter vs written
description and more
o Drafting the European application
o PCT applications
o Ensuring entitlement to priority, avoiding
deadly pitfalls for US applicants
o ‘Global’ patent applications that can
satisfy US requirements
• Entitlement to priority (again!) and pitfalls
for the unwary:
o Inventorship
o Assignments
o Toxic divisionals
o Toxic priorities
o Double patenting
◆
• The latest changes in European law
• European Patent Office Oppositions
o Filing, admissibility and substantive
examination of oppositions
o Revised EPO Guidelines for Examination
o Decisions from the EPO Enlarged Board
of Appeal
o Oral Proceedings
o Appeals
o Other EPO post grant procedures
o Decisions from the Court of Justice of the
European Union (CJEU)
o Third party observations
o The Unitary Patent
o The Unified Patent Court G
o Compare and contrast with IPRs and
PGRs
R
elax in the sun by the half-acre,
lagoon-style swimming pool.
T
◆
Federal Circuit Law
(2013-2015)
15.0 Hours
Course Faculty
The one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the court’s history,
provide matchless inside perspective and candid, unequaled insight to Federal Circuit law – past,
present and future.
Orlando, FL
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Thurs-Fri)
8:15 a.m. – 11:30 a.m. (Sat)
Each week the Federal Circuit
publishes opinions that materially
“clarify” and sometimes “alter”
existing
practice.
One
cannot
competently practice as a patent
attorney today, in prosecution,
litigation, counseling or licensing
without an understanding of the
Federal Circuit’s most recent opinions.
The distinguished faculty of Federal
Circuit Law (2013-2015) will expertly
guide you through two years of relevant
and up-to-the-minute cases in an
interactive lecture format that
encourages
active
attendee
participation. Moreover, lecturers will
discuss new cases in the context of prior
cases (many outside the two-year time
span), thus giving you not only “current
law,” but also a perspective on how the
law has changed.
PETE PETERSON
JAMES BARNEY
GENE SPEARS
MICHELLE ARMOND
LAW OFFICES OF
GALE R. PETERSON
SAN ANTONIO, TX
(FORMER TECHNICAL ADVISOR
TO THE LATE CHIEF JUDGE
MARKEY)
FINNEGAN, HENDERSON,
FARABOW, GARRETT &
DUNNER, LLP
WASHINGTON, DC
(FORMER LAW CLERK TO
CIRCUIT JUDGE CLEVENGER)
BAKER BOTTS
HOUSTON, TX
CIRCUIT JUDGE NIES)
KNOBBE MARTENS
IRVINE, CA
CIRCUIT JUDGE LINN)
Course Description - Two Years in Review - Taught by Experienced Lecturers, All Former Technical
Advisers/Law Clerks
his is one of PRG’s longest continuously offered courses. Because the course focuses on
the last two years, attendees often repeat this course every two years to remain current.
Consequently, this course offers practitioners a unique opportunity to both become current
in the law, and to remain so. And to do so in an interactive environment that is both informative
and intellectually challenging. The interactive environment (as described below) allows attendees
to contribute to the learning experience, and avoid sitting through a series of dull lectures.
T
There was a time when “patent law” was considered sufficiently “settled” such that slip opinions
could be allowed to accumulate in a “stack” until an opportunity or need for review arose. Those
days are gone. Now that “stack” for many has become a large electronic file and has likely grown
beyond the point of realistically being able to “catch-up” with the opinions. If this applies to you,
then you are a prime candidate for this course.
Every practitioner knows the importance, if
not the fundamental requirement, of staying
up-to-date on Federal Circuit and Supreme
Court law. But the Federal Circuit daily hands
down opinions, frequently precedential
opinions in patent cases that, according to the
Federal Circuit’s Internal Operating Procedures
for precedential opinions (IOP # 10), add
something to the existing body of case law, as
opposed to simply resolving the parties’
dispute. Thus, each precedential opinion was
considered, by definition, noteworthy enough
that the Federal Circuit elected to issue a
precedential opinion.
Although some may question that choice,
failing to stay up-to-date on at least
precedential opinions, by definition, results in
“flying blind” in the face of sometimes rapidly
developing changes, many times involving
opinions creating new “issues,” and “new
law,” for litigators and prosecutors alike.
What’s more, even taking the time to
religiously read the opinions is frequently not
enough. The Federal Circuit unfortunately
often issues opinions that vary from
established precedent – sometimes
dramatically, sometimes more subtly – and
often without even mentioning prior contrary
◆
authority. Or, in which contrary authority is
buried in dissenting and concurring opinions.
Such opinions are highlighted in the course.
remain unchanged – and those individual
views are important to prosecutors and
litigators alike.
Of Equal Importance: The Changing “Face” of
the Federal Circuit:
New judges necessarily mean new judicial
philosophies, and possible “refinements,” if
not outright changes, in existing law. We are
already seeing some of that. Judge Wallach,
confirmed in 2011, emphasized in Plantronics,
Inc. v. Aliph, Inc. (2013) that in connection
with the “secondary” or “objective” factors
under §103, “we have required courts to
consider evidence of the objective indicia of
nonobviousness prior to making the ultimate
determination of whether an invention is
obvious.” In his concurrence in Apple, Inc. v.
U.S. Int’l Trade Comm’n (2013), Judge Reyna,
who was also confirmed in 2011, similarly
stated “I emphasize that objective evidence of
nonobviousness, such as that gleaned from
the patented product’s role in the marketplace,
is the indicia of the innovation principle upon
which rests our system of patents.” Thus,
these two newer, active judges have expressed
judicial philosophies that emphasize the
importance of “secondary” or “objective”
evidence of nonobviousness that, while
correct, add elements of timing and weight
not seen recently.
The “face” of the Federal Circuit has
changed dramatically over the past three
years. The Federal Circuit is not a monolith,
but rather a collection of twelve (currently
eleven) full-time active and, currently, six senior
judges, each of whom have individual judicial
philosophies that impact various patent law
issues. The “judicial philosophy” of those
active and senior judges is far from uniform.
For example, some of the judges favor limiting
claim construction to “the invention” that is
the subject of the “written description,” while
others focus more on the claim language.
Some judges take a narrow view of the
Supreme Court’s recent decisions involving
patent eligibility under §101, while others take
a more expansive view. The list goes on.
As a result, actually understanding Federal
Circuit opinions today frequently requires
going beyond the printed words to instead
focusing on the views of individual judges
participating in that opinion – whether writing,
joining, concurring or dissenting. For example,
in CLS Bank Int’l v. Alice Corp. Pty. Ltd. (2013),
although issued as an en banc opinion on
patent eligibility under §101, diverse opinions
totaling 135 pages were handed down on
several issues – collectively only garnering
plurality (not majority) support on core issues
necessary to resolve the dispute. The Supreme
Court ultimately affirmed the sharply divided
Federal Circuit, but did so without answering
the critical question: What is an abstract idea?
Thus, the views of at least some Federal Circuit
judges on patent eligible subject matter likely
Also, in important cases such as CLS Bank
Int’l v. Alice Corp. Pty. Ltd., new judges
Taranto, Chen and Hughes did not participate,
and Judge Linn has assumed senior status.
Because of the close votes, those changes in
the Court could sway the Federal Circuit one
way or the other on fundamental issues
involving §101, especially given the Supreme
Court’s lack of true guidance on what
constitutes an “abstract idea.” Despite that a
majority of the Supreme Court in Bilski refused
to hold that all “business method” patents
constituted patent-ineligible subject matter, is
that the practical effect of Alice – both in the
views of a majority of active judges on the
Federal Circuit and the Supreme Court? And
are “software patents” likewise doomed, as
some Federal Circuit judges have predicted?
Indeed, since 2010, three active judges have
resigned, two active judges have assumed
senior status, two senior judges have died, and
six new active judges have been confirmed –
three in 2013 alone – and Chief Judge Prost
assumed the chief judge position within the
past year. Thus, more than one-half of the
Federal Circuit’s complement of active judges
has been replaced since 2010 – a rare event by
itself – and the “judicial philosophy” of the
most recent appointees is just emerging. The
changing “face” of the Federal Circuit, now
with Chief Judge Prost, suggests even more
significant changes in the law in upcoming
opinions.
Increased Supreme Court Review
The U.S. Supreme Court has, over the past
few years, granted certiorari in a record
number of IP cases. In its 2012 Term (20122013) for example, the Supreme Court
decided six cases involving IP issues – Bowman
v. Monsanto Co. (patent exhaustion), Already,
LLC v. Nike, Inc. (although a trademark case, it
involved covenants-not-to-sue in a context
analogous to patent law), Kirtsaeng v. John
Wiley & Sons, Inc. (international exhaustion
under copyright law – similar issue arises in
patent law), Gunn v. Minton (federal
jurisdiction of legal malpractice actions),
Association for Molecular Pathology v. Myriad
Genetics, Inc. (patent eligibility under §101),
and Federal Trade Comm’n v. Actavis, Inc.
(reverse settlement agreements).
... continued on next page.
T
he Hyatt Regency Grand Cypress will be your
home away from home while you attend PRG's
Spring Advanced Courses Program.
◆
In its 2013 Term (2013-14), the Supreme
Court issued decisions in seven patent law
related cases (six on cert. to the Federal Circuit,
and one on cert. to the Ninth Circuit), Alice
Corp. Pty. Ltd. v. CLS Bank Int’l (§101 patent
eligibility), Medtronic, Inc. v. Boston Scientific
Corp. (burden of proof in declaratory
judgment actions involving a non-breaching
licensee), Octane Fitness, LLC v. ICON Health &
Fitness, Inc. (“exceptional” case standard),
Highmark Inc. v. Allcare Management Systems,
Inc. (deference to be accorded to district
court’s exceptional case determination),
Nautilus, Inc. v. Biosig Instruments, Inc.
(Federal Circuit’s “insolubly ambiguous”
standard for indefiniteness), Limelight
Networks, Inc. v. Akamai Techs., Inc. (induced
infringement) and Petrella v. Metro-GoldwynMayer, Inc. (cert. to the Ninth Circuit - laches
in copyright cases – similar issue arises in
patent law – although in SCA Hygiene
Products Aktiebolag v. First Quality Baby
Products, LLC (2014), the Federal Circuit
declined to change its precedent based on
Petrella). The Supreme Court has also heard
arguments in Teva Pharms. USA, Inc. v. Sandoz
Inc. (challenging the Federal Circuit’s de novo
review of claim construction, and thus may
overturn the Federal Circuit’s “Cybor Rule”
recently confirmed by the Federal Circuit en
banc in Lighting Ballast Control LLC v. Philips
Electronics North America Corp. Although the
primary focus of the course is on Federal
Circuit law, Supreme Court cases are covered
as well.
Filling In the Gaps
This course “fills in the gap” left by
“traditional” CLE programs and various
published “case summaries,” and is designed
to allow counsel to comprehensively become
and remain current on today’s frequent and
rapid changes in the law. Unlike the one year
or less coverage typically offered by CLE
courses, this course covers a two-year span,
providing in-house and outside counsel alike
an opportunity to remain comprehensively
current on important cases by attending
biennially.
Also, unlike many CLE courses that offer a
“patent law update” in a one hour or so time
slot (which necessarily limits focus to but a few
of the 100+ decided cases), this course offers
a comprehensive review of precedential cases
(as well as select non-precedential cases), in
several formats of varying depth so that the
attendee can choose which format works best
– namely comprehensive text, PowerPoint
slides, and lectures focused on “new
developments”: (A) The course is scheduled
over 2 ½ days – time for in-depth review and
analysis. (B) Cases are reviewed in three
volumes of comprehensive text. (C) Case
highlights are addressed in printed PowerPoint
slides which attendees may follow and
annotate during the lectures. (D) Issues unique
in each presented case, and how those issues
relate to prior law, will be highlighted, plus the
opinions will be “boiled down” to various
“teaching points,” as well as to insights to the
Federal Circuit that are only available through
the “lens” of a former technical advisor/law
clerk.
For example, the text for cases that primarily
involve novelty and loss of right to a patent
under §102, and obviousness/nonobviousness
under §103, span 300+ pages of review and
analysis. Additionally, those cases are further
digested into PowerPoint slides that an
attendee may annotate during the discussion
of §§102 and 103 cases. Thus, an attendee
may follow the discussion while annotating
the slides and refer to them later. The same is
true for the numerous other topics listed in the
course syllabus.
Also unlike most CLE courses, this program
is “interactive.” Questions from attendees (as
well as from the panel), and open discussion,
are actively encouraged in “real time” during
the lectures. If you disagree with (or agree
with) a point made by a lecturer, or wish to
raise a question or observation, you need only
raise your hand. The lecturer will stop and
recognize you – and whatever
question/comment you have may spark further
debate – which we encourage. Over the years
we have found that this “interactive”
environment is a “signature” feature of this
course. The issues we talk about are generally
worthy of debate – we encourage the same.
Sampling of Cases Reviewed
There are a number of both controversial
and “must know” decisions that will be
addressed. This is just a sampling.
In Suffolk Techs., LLC v. AOL, Inc. (2014),
the Federal Circuit concluded that a Usenet
“post” in one of over 100,000 Usenet groups,
constituted a “printed publication,” despite
serious questions as to whether such posts are
truly “accessible” in the manner contemplated
for “printed publications.” The Federal
Circuit’s surprisingly shallow analysis suggests
that perhaps Usenet and Internet “postings”
may be held to constitute “printed
publications” without the rigorous analysis of
“accessibility” required by prior law.
Practitioners writing applications for
computer-aided inventions should thoroughly
understand the implications of cases such as
Triton Tech of Texas LLC v. Nintendo of
America, Inc. (2014), holding claims calling for
an “integrator means” invalid for failure to
disclose a corresponding algorithm — although
numerical integration algorithms were widely
known in the art. Similar cases include Augme
Techs., Inc. v. Yahoo!, Inc. (2014), which held
that “[s]imply disclosing a black box that
performs the recited function is not a sufficient
explanation of the algorithm required to
render the means-plus-function term definite.”
But contrast cases such as TecSec, Inc. v. IBM
(2013) concluding that “system memory
means” and “digital logic means” conveyed
sufficient structure to avoid §112(f).
In the area of inequitable conduct, a panel
majority in Network Signatures, Inc. v. State
Farm Mutual Automobile Ins. Co. (2013)
concluded that filling out a PTO form
indicating that failure to pay a second
maintenance fee was “unintentional” without
any further supplementation did not constitute
inequitable conduct. But a strong, wellreasoned dissent argued otherwise. On the
other hand, the opinion in Intellect Wireless,
Inc. v. HTC Corp. (2013), involving a false Rule
132 affidavit, gives us the first clear instance of
adjudged inequitable conduct following
Therasense. For those thinking that Rohm &
Haas Co. v. Crystal Chem. Co. (1983) was no
longer good law – think again.
Case law decisions in the area of patent
eligible subject matter under §101 have
particularly left practitioners without true
guidance. In In re Bilski, the Federal Circuit
attempted to clarify the test for determining
whether a claim recited patent-eligible subject
matter by holding that its “machine or
transformation test” was the sole and
exclusive inquiry. The Supreme Court promptly
rejected the machine or transformation test as
the sole test for patentable subject matter, but
declined to articulate a clear test thus leaving a
vacuum for the Federal Circuit to fill. The
Supreme Court also thoroughly rejected the
Federal Circuit’s view of §101 in Mayo
Collaborative Services v. Prometheus Labs.
(S.Ct. 2012), but the Federal Circuit responded
in Myriad (2012) in a 106-page collection of
three opinions continuing to advocate its
splintered view of § 101. The Supreme Court,
on review in 2013, largely rejected the
rationale of the Federal Circuit majority, but
did little to clarify the ambit of patent-eligible
subject matter outside the specific facts of that
case.
Meanwhile, the Federal Circuit continues
with its view of patent eligibility under §101.
For example, a panel in Digitech Image
Technologies, LLC v. Electronics for Imaging,
Inc. (2014) reached back to an 1863 Supreme
Court decision to conclude that “[f]or all
categories [under § 101] except process
claims, the eligible subject matter must exist in
some physical or tangible form.” What are the
◆
long-term implications? In buySAFE, Inc. v.
Google, Inc. (2014), the first case after the
Supreme Court’s decision in Alice, the Federal
Circuit panel signaled a broad view of patentineligible subject matter – and, according to
some views, the demise of business method
patents, as a practical matter, despite the
Supreme Court’s majority view in Bilski.
Claim construction remains controversial.
The Federal Circuit granted en banc review in
Lighting Ballast Control LLC v. Philips
Electronics North America Corp., on the
question whether the court should overrule
Cybor Corp. v. FAS Technologies, Inc. (1998),
namely that claim construction was a question
of law for the court. A widely fractured en
banc court concluded that the “Cybor Rule”
should continue based on stare decisis, but
there were strong dissents. The Supreme
Court will decide the issue in Teva Pharms.
USA, Inc. v. Sandoz Inc. Also, although the
Federal Circuit is badly split on whether claim
language or the scope of the specification
should predominate in claim construction, in
Hill-Rom Services, Inc. v. Stryker Corp. (2014),
Circuit Judge Moore wrote strongly that “[w]e
depart from the plain and ordinary meaning of
claim terms based on the specification in only
two instances: lexicography and disavowal.”
Will her view prevail?
Some have viewed the change in patent
term from 17-years from issue to 20-years
from filing as removing the need for
obviousness-type double patenting. Not so,
the Federal Circuit held in Gilead Sciences, Inc.
v. Natco Pharma Ltd. (2014), concluding that
an earlier-expiring patent can qualify as an
obviousness-type double patenting reference
for a later expiring patent – even though at
the time the later-filed patent issued, the
earlier filed patent had not issued (and thus
presented no basis for an assertion of doublepatenting). That presents a nightmare for
prosecutors. How does one decide whether to
file a terminal disclaimer?
In In re Packard (2014), the Federal Circuit
(pre Nautilus) concluded that the standard for
pre-issuance indefiniteness is a “wellgrounded rejection that identifies ways in
which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise
unclear.” Will the Federal Circuit adopt
something similar in post-Nautilus cases?
The court also continues to break new
ground in the interplay of reexamination and
district court infringement litigation. In a
surprise to many observers, the Federal Circuit
in Fresenius USA, Inc. v. Baxter (2013) held
that the PTO’s cancellation of claims in
reexamination moots a pending infringement
action on those claims. As a result, the district
court’s “final,” multi-million dollar judgment
was reversed because it was not “final
enough.” With the denial of en banc review,
and Circuit Judge O’Malley’s strong dissent
urging a circuit conflict with Qualcomm, Inc. v.
FCC (D.C. Cir. 1999), this is a “must know”
highly controversial case, with or without
Supreme Court review, affecting counsel’s
choice to seek reexamination.
Inc. (2014). The panel will explore the practical
implications in proving reasonable royalty
damages.
In the area of inter partes review (IPR),
ushered in by the AIA, the Federal Circuit in
three cases, St. Jude Medical Cardiology
Division, Inc. v. Volcano Corp. (2014), In re
Dominion Dealer Solutions, LLC (2014), and In
re Procter & Gamble Co. (2014), concluded
that (1) a decision by the PTO Director not to
institute an IPR was not appealable to the
Federal Circuit (and may not be appealable at
all), (2) a writ of mandamus may not be used
to compel the PTO Director to grant IPR, and
(3) a writ of mandamus may not be used to
force the PTO to withdraw orders instituting
an IPR, thus leaving the PTO Director’s decision
virtually unreviewable. And in VirtualAgility Inc.
v. Salesforce.com, Inc. (2014), the Federal
Circuit sharply criticized the district court for
“second guessing” the PTO Director’s decision
in the context of refusing a stay in the pending
litigation. What alternatives, if any, are
available?
Smoothing the Troubled Waters?
In the area of litigation, it has long been the
rule that a patent co-owner must join in a
patent infringement suit. If a patent-co-owner
refuses to do so, can the co-owner be
involuntarily joined under FED. R. CIV. P. 19(a)?
In a case almost certainly ripe for Supreme
Court review, the panel in STC.UNM v. Intel
Corp. (2014) concludes “No,” over a strong
dissent. The Federal Circuit widely fractured in
subsequently denying rehearing en banc, with
strong dissents by Circuit Judges O’Malley and
Newman. So, regardless of who’s right or
who’s wrong, how do you avoid the issue?
Worried about a mediator’s prior
relationship to the attorneys involved in the
case? Ammunition is provided in CEATS, Inc. v.
Continental Airlines, Inc. (2014) in which the
Federal Circuit addressed the disclosure
requirements of mediators. But is that
enough? What disclosures should you seek
from prospective mediators?
Lastly, for those thinking that LaserDynamics
opened the way to considering only the
“smallest saleable unit” in determining
reasonable royalties – think again. Also, those
thinking that the “Nash Bargaining Solution”
(a current popular damages theory) could be
used to avoid the demise of the “25% rule” in
Uniloc USA, Inc. v. Microsoft Corp. (2011) –
think again. The Federal Circuit addressed
both at length in VirnetX, Inc. v. Cisco Systems,
Those are but highlights. Federal Circuit and
related Supreme Court opinions in the past
two years have created law that practitioners
must know – especially in light of the
changing composition of the court.
In many respects, this is a user-designed
dynamic course because we collected and
analyzed course evaluations to determine the
topics and emphasis of greatest importance.
For the many that have attended this course
punctually every two years, the curriculum, in
response to user input, retains the topics you
have come to expect, but has been expanded
to include separate chapters and lectures on
Federal Circuit en banc cases and Supreme
Court cases, selected important cases that do
not conveniently fit within a single topic as
well as noteworthy practice & procedure cases,
noteworthy appellate practice cases, joint
infringement, legal ethics within the context of
recent inequitable conduct cases, and selected
Hatch-Waxman cases, among others – and
now including the AIA.
All of the above represents just some of the
continually breaking judicial news from the
Federal Circuit and Supreme Court that will be
covered. As attested by hundreds of past
course attendees, the faculty presents just the
right amount of factual and legal detail for
mastering each case discussed.
Course Materials
The full substance of the course is captured
in the Federal Circuit Patent Law three-volume
electronic text, which extends over 1,500 pages,
supplemented by PowerPoint slides that digest
individual cases and court trends on specific
topics. G
• “Thorough review of each topic and each CAFC
decision. Good discussions among speakers and
attendees. Very knowledgeable speakers.”
— Fred Burkhart
Gardner, Linn, Burkhart & Flory, LLP
• “I've been attending this course, periodically, over
a number of years, and it continues to get better
& better.”
— Steven Fontana
Fontana International
NEW
G
Hatch-Waxman and Biosimilars:
◆
COURSE
A Total Immersion Course Encompassing
Strategies for Prosecution, FDA Regulation,
Post-Grant Challenge, Litigation and Appeal
16.5 Hours
Orlando, FL
Course Faculty • The faculty, all principals in Fish & Richardson’s vaunted life sciences group, collectively
has many decades of experience counseling pharmaceutical and biotech companies in patent and
regulatory strategies based on the Hatch-Waxman Act and biosimilars legislation, ranging from patent
prosecution, to Orange Book listing and drug labeling strategies, to litigation and inter partes reexamination (now Post Grant). The team has been lecturing on pharmaceutical and biotech patent law for
Patent Resources Group for over 15 years. They teach these topics in the same way they approach them
for their clients – as an integrated whole.
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:15 p.m. (Thurs-Sat)
JANIS FRASER
G NEW COURSE
This course will let you hone the
skills needed to prosecute, evaluate,
challenge, and enforce pharmaceutical
and biotech claims in an ever-changing
legal and economic climate. Learn
cutting-edge strategies for putting
pharmaceutical and biotech patents,
US regulatory law and dispute
resolution techniques to work for your
company's benefit. This “immersion”
course is taught by an experienced
team who puts it all together for you.
It will be valuable not only for
attorneys but also for any corporate
decision maker who needs to
understand how the Hatch-Waxman
and biosimilars legislation shape
complex patent and regulatory
decisions for his or her company.
DOROTHY WHELAN
TERRY MAHN
Course Description
he course starts with a broad survey of the Hatch-Waxman and BPCIA legislation provisions
that underpin the strategies to be discussed throughout the course. The course then conveys
both fundamentals and advanced legal strategies in three major areas: (1) pharmaceutical
and biotech patent prosecution; (2) litigation and appeal; and (3) post-grant challenges such as interpartes review and post-grant review. These topics are taught as a seamless whole by four principals
from Fish & Richardson P.C., who utilize frequent cross-references to highlight the interplay among
all the topics. For example, relevant patent case law (including the most recent biotech and pharma
cases) is discussed from different viewpoints in the context of prosecution and enforcement. An
expert on the Hatch-Waxman and biosimilars laws will provide a coherent overview of these complex
provisions; another lecturer will explain these laws’ critical importance to patent enforcement in the
pharmaceutical and biotech fields; and others will show how these laws inform strategy in prosecution
and post-grant challenges. Strategies for managing the life cycle of patented drugs is a theme that
echoes throughout the course. This course provides valuable, practical information for the patent
practitioner, whether in-house or in private practice, to use in maximizing protection of biotechnology
and pharmaceutical inventions with an eye to possible future enforcement and post-grant validity
challenges. The litigator will come away with a comprehensive understanding of the pertinent case
law and concepts necessary to enforce pharmaceutical and biotechnology patents, to recognize the
weaknesses in improvidently granted patents, and to weigh strategic considerations. Company
executives tasked with making strategic decisions based on their own company’s patent portfolio as
well as those of their competitors will benefit immeasurably from the broad understanding of biotech
and pharmaceutical patent and Hatch-Waxman law gleaned from this immersion course.
T
Course Focus
A key feature of the course is the immersion
aspect, intended to convey an overall
understanding of the various parts of the
Hatch-Waxman Act, as well as strategies for
obtaining strong patent claims or for
W. CHAD SHEAR
FISH & RICHARDSON PC
BOSTON, MA • MINNEAPOLIS, MN • WASHINGTON, DC • WILMINGTON, DE
challenging or enforcing patents under that
regime. In an industry where billions of dollars
often hinge on the viability of a single patent
claim, the economic risks of getting it wrong
can be enormous. Discovering and developing
new pharmaceuticals—whether biomolecules
◆
or traditional small molecules—entails
extraordinary R&D costs (some estimate over
$2B per drug) with no guarantee of success.
Without the protections afforded by patents
and the various regulatory exclusivities
provided by the Hatch-Waxman Act and the
2009 Biologic Price Competition and
Innovation Act (BPCIA), the pharmaceutical
and biotech industries as we know them would
not exist. Generic manufacturers aggressively
challenge the patents covering FDA-approved
drugs, the boundaries of the Hatch-Waxman
Safe Harbor continue to shift, FDA reforms
have limited the Orange Book as a weapon for
brand dominance, and the BPCIA legislation
authorizing a new approval pathway for
biosimilars may fundamentally change the life
cycle management of biomolecule drugs.
T
Against this backdrop, biotechnology and
pharmaceutical patent law continues to evolve
rapidly, with numerous abrupt shifts and
reversals of policy just in the last decade.
Recent Supreme Court decisions regarding
patent-eligible subject matter and inducement
have the potential to exclude broad categories
of pharmaceutical and biotech inventions from
patenting and to make enforcement of
method claims essentially impossible where
multiple parties carry out the claimed method.
as side effects) discovered after the product is
on the market. The lecturers will explain what
to expect in a Hatch-Waxman litigation or in
the “patent dance” required by the BPCIA,
considerations to take into account when
settling such a litigation, and strategies for
successfully challenging a patent (or surviving
a challenge) under the various types of postgrant procedures. The increasing importance
of the pharmaceutical label as a way to extend
the life cycle of an approved drug is explored
and specific strategies proposed.
Course Highlights
Topics covered by the course include ideas
for addressing the new challenge of patenting
compositions derived from nature, for ensuring
that your claims will survive validity challenges,
and for obtaining patents on inventions (such
Course Materials
Each attendee will receive a detailed set of
slides covering all of the topics included in this
intensive immersion course. G
he upper pool deck is a great place to unwind after
you are through with your courses for the day.
◆
Patent Drafting & Prosecution
Based on a Single EPO/USPTO
Specification
15 Hours
Course Faculty • This course is taught by one U.S. and one European patent attorney with experience in
both patent prosecution and litigation for multinational clients.
Orlando, FL
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Thurs-Fri)
8:15 a.m. – 11:30 a.m. (Sat)
Brought to you in
partnership with:
BRADLEY HULBERT
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
CHICAGO, IL AND MOUNTAIN VIEW, CA
DAVID MELDRUM
D YOUNG & CO LLP
LONDON
Course Description
hile the EPO and USPTO have similar requirements for patent applications, the same
application can have dramatically different results in Europe and the U.S. An application
originating in the U.S. frequently encounters substantial difficulties before the EPO. For
example, the U.S. applicant often finds itself unable to amend claims in a manner clearly available
during U.S. prosecution because of European "Priority Rules." Recurrently, claims issued by the
EPO to a U.S. applicant are unnecessarily narrow by European standards.
W
This course will show you how to draft and prosecute one, optimized patent application that will
comply with the differing requirements of both the EPO and the USPTO.
There will be practical worked examples, illustrations, demonstrations of “best practice” and plenty
of discussion, ensuring that you will go home with a realistic and workable solution to a perennial
problem.
This course is ideal for anyone who
files patents before both the EPO and
the USPTO. It provides a practical
approach to developing a single patent
application that complies with the
requirements of both of these patent
authorities.
The need for optimizing a patent
application, so as to meet the requirements of
both the USPTO and European Patent Office,
has never been greater. And USPTO and EPO
Examiners continue to act on divergent
expectations regarding the applications they
review.
This course will give attendees a
comprehensive overview of the principles
underlying the preparation and prosecution of
patent applications in both the U.S. and Europe.
The speakers will:
• Explain key, major differences between
practice before the USPTO and European
Patent Office
• Compare and contrast the sometimes quite
different statutory requirements in each
jurisdiction, and propose solutions to
maximize the scope of protection and
minimize costs
• Offer the "best practices" for preparing an
application that is well-suited for filing in
both the U.S. and Europe
• Discuss the implications of different
EPO/U.S. prosecution procedures and
timelines
• Describe differences in "prior art"
definitions between the EPO and the USPTO
• Show how to draft effective responses to
EPO rejections, comparing EPO "inventive
step" and USPTO "obviousness" arguments
Practical application:
• During the course attendees will be invited
to edit sample claims, specfications, and
responses to Official Actions.
• Such sessions will be followed by plenary
sessions during which attendees and
speakers will discuss the worked examples
to produce optimal submissions to the EPO
and USPTO.
◆
The seminar will also include ongoing
opportunities for participants to ask questions
and discuss individual concerns.
P
For course syllabus, go to our website:
www.patentresources.com G
alm trees? Sunshine? Blue skies?
You must be in Orlando, Florida!
◆
Patent Due Diligence
in the AIA Era
15.0 Hours
Course Faculty
The faculty, considered collectively, have participated in over 100 due diligence evaluations and will take
you through the process “soup to nuts,” whether you are representing the target or the acquirer.
Orlando, FL
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Sun-Mon)
8:15 a.m. – 11:30 a.m. (Tues)
As today’s tight economy continues
to challenge the business of clients,
pressure mounts for the patent
practitioner to help clients enjoy a
higher return on investment in deals
involving both acquisitions and
licensing-in of patent rights. By the
same token, those who represent
target companies need to learn the IP
strategies that help maximize income
from either takeovers or licensing-outs.
Attendees consistently grade the
Due Diligence course and its faculty
with some of the highest ratings of any
course that PRG offers. This critically
acclaimed course will help you raise
your game to new levels, whether you
are representing suitors or targets.
Sign up now for this 2 ½ day
course. Sure, you’ll miss some time out
of the office. But your return on
investment will be a finely honed
ability to help clients see an increase in
their returns on investment.
BRYAN DINER
ANTHONY GUTOWSKI
ANDREW HOLTMAN
WASHINGTON, DC AND RESTON, VA
Course Description
his course will provide practical guidance for conducting patent due diligence investigations
in today’s changing legal environment. The panel will explore how the America Invents Act
(AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect the
due diligence process, while sharing practical techniques and strategies for conducting complete
investigations. These tactics apply to both large and small transactions, irrespective of the nature
of the specific transaction or the party you might be representing. Now, more than ever, companies
contemplating commercial transactions—be they licensing, corporate mergers, acquisitions, or
private equity deals—need to rely on due diligence counsel to provide a thorough understanding
of the value and risks associated with the transfer of intangible assets.
T
• “This is a very comprehensive due diligence
course. The speakers are very knowledgeable
and continually supplement the course
curriculum with real-world war stories. The
course materials are invaluable and include a
great overview of AIA.”
— Anthony Colesanti
C.R. Bard, Inc.
April 2013/April 2008 attendeee
• “I really liked the experience of the instructors
and the structure of the course that will allow
me to organize and run a due diligence. The
checklists are fantastic!”
— Wesley Muller
UNDER ARMOUR®
Fall 2014 attendee
• “This course covered a wide range of topics
related to due diligence. It is one of the best
courses I've taken because it covered so many
different topics, but within the scope of a deal.”
— Stephen F. Rost
Taft Stettinius & Hollister LLP
Fall 2014 attendee
During the course, you will interact with
instructors and other students while exploring
case-study examples and lecture topics on a
wide range of issues:
• common legal-interest agreements
• claim construction
• freedom to operate
• validity assessments
• inequitable conduct
• patent eligibility, and
• ownership/transferability.
◆
The lively and entertaining presentation
covers every phase of a due diligence
investigation. Beginning with the initial
involvement of patent counsel, the panel
navigates a course through early informationgathering, drawing in the attendees as part of
the due diligence team to spot critical patent
issues that can make or break a deal. The panel
also shares effective strategic approaches to
focus investigations and requests for further
information during the plunge into the data
room and to facilitate making recommendations
to the client that may ultimately affect the price
and structure of the deal.
On Day 1, from approximately 2:30 to 4:45
p.m., as currently estimated, we will discuss
potential ethical issues and inequitable conduct
hazards that may arise during an IP due
diligence investigation.
The concluding sessions of the course cover
risk-management issues that provide invaluable,
suggestions
for
contractual
practical
considerations, including effective uses of
representations and warranties. Topics discussed
in the course apply both to investigating a
target’s patent portfolio and to preparing a
portfolio for suitors.
You’ll receive a thorough electronic course
book, as well as printed slides, chock full of
notes, examples, and case law.
The faculty—partners at Finnegan—are all
patent attorneys with extensive experience in
due diligence investigations. The panel has
many years of experience in IP practice and
expertise in several different areas of technology.
Throughout the course, the faculty shares
interesting “war stories,” observations, and
practical tips for conducting the investigation in
a comprehensive and efficient manner.
In short, the knowledge you’ll gain from this
course will enable you to avoid due diligence
pitfalls, while more effectively assessing and
managing risks endemic in business transactions
involving complex IP rights and issues. G
M
odern styling and beautiful greenery
adorn the property, providing a wonderful
ambience in which to relax and unwind.
◆
Patent Infringement Litigation
15.0 Hours
Orlando, FL
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Sun-Mon)
8:15 a.m. – 11:30 a.m. (Tues)
Course Faculty
The course is taught by highly experienced trial lawyers at Robins, Kaplan, Miller & Ciresi, LLP, whose
record of victories in patent cases is truly remarkable and includes: Personal Audio v. Apple ($12 million
judgment, post-trial motions pending); AMD v. Samsung (case involving seven affirmative patents and six
counterclaim patents, confidential settlement); Pitney Bowes v. Hewlett-Packard ($400 million); Fonar v.
General Electric ($110 million); Atlantic Richfield et al v. Unocal ($69 million); Honeywell v. Minolta ($96
million); Honeywell v. JVC ($30 million); St. Clair v. Canon ($34 million); St. Clair v. Sony ($25 million);
Grantley v. Clear Channel Communications ($89 million); TriStrata Technology v. Mary Kay ($43 million);
Eolas v. Microsoft (confidential settlement after remand); Ricoh v. Pitney Bowes (defense verdict affirmed
on appeal); General Motors v. General Electric (summary judgment of invalidity, affirmed on appeal).
JAKE HOLDREITH
AARON FARENKROG
MARLA BUTLER
MATTHEW MCFARLANE
ROBINS, KAPLAN, MILLER & CIRESI, LLP
MINNEAPOLIS, MN • NEW YORK, NY
Course Description
The Patent Infringement Litigation
course will show you how to develop
and execute a winning strategy to
coordinate all aspects of a complex
patent case and achieve your business
objectives. We will take you through
the whole process, from the first
concept of the idea to litigate to posttrial motions.
his course is the most practical, immediately usable patent infringement litigation course
ever presented by Patent Resources Group (and perhaps by any institution). The focus is
on patent litigation (not litigation in general). The course starts at the first concept of the
idea to litigate and the critical initial decision to file suit, continues through discovery and trial, and
on to the end of post-trial motions, as well as initial defensive considerations and developing and
implementing defensive strategies throughout the case. The course includes a live demonstration
of a Markman hearing and a section on damages and injunctive relief.
T
• “Well done in all regards. Experienced
practitioners, concrete examples, and quite good
and interesting.”
— Steven Berryman, Quarles & Brady LLP
April 2010 attendee
• “Good overview of entire litigation process with
enough insight and detail to be relevant to a
broad audience.”
— Bill Hardie, W. L. Gore & Associates
April 2012 attendee
The course is designed for and directed to
corporate counsel who have or expect to have
patent litigation supervision responsibilities;
experienced litigators who seek to acquire
increased competence and abilities in this
expanding practice specialty; and private
practitioners with limited litigation experience
seeking to expand their practice.
The 2015 Patent Infringement Litigation
course will include several items on the cuttingedge of both advocacy strategies and
substantive developments in the law. These
include:
• A demonstration of how to conduct the
most
effective
claim
construction
presentations at the highest level, including
the use of two screens with synchronized
presentations, animations, and integration
of technical tutorial with argument on claim
terms;
• An in-depth discussion of the America
Invents Act and its impact on patent
litigation; and
• A bonus presentation of how to move a
billion dollars across the table in patent
litigation without trial or appeal.
Legal ethics in the context of willful
infringement issues will be presented from
3:15 to 4:15 p.m. on the second day, as
currently estimated.
◆
Course Materials
The course is based on the thoroughlyresearched textbook, updated annually by Robins,
Kaplan, Miller & Ciresi, LLP authors to reflect the
T
latest statutory changes, and critical rulings from
the Federal Circuit and district courts on
infringement, invalidity, damages, discovery,
experts, and more. The textbook will be handed
out at the course, along with a printed copy of the
course slides (with room for note taking) that will
be a particularly convenient and useful reference.
G
he rocks under the lagoon pool provide a
beautiful escape from everyday stress.
◆
Post-Grant Patent Practice: Review
Proceedings and Reexamination
15.0 Hours
Orlando, FL
Course Faculty • The instructors are experienced at representing both patent owners and accused infringers
in review proceedings and reexaminations at the PTAB and the Federal Circuit. They have taught the PostGrant Patent Practice course for six years and continuously update their treatise and slides to provide
practical advice based on current cases involving review proceedings, reexaminations, and other post-grant
matters. They were actively involved in bar associations’ efforts to help the PTO design and implement the
new review proceedings created by the America Invents Act (AIA). They have written widely on review
proceedings for Intellectual Property Today and topics related to other post-grant proceedings.
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Sun-Mon)
8:15 a.m. – 11:30 a.m. (Tues)
KEVIN B. LAURENCE
MATTHEW C. PHILLIPS
OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT
ALEXANDRIA, VA
RENAISSANCE IP LAW GROUP LLP
PORTLAND, OR
Course Description
The battleground of patent validity
has shifted from courts to the PTO.
Review proceedings, including inter
partes review, covered business method
patent review, and post-grant review,
are powerful, fast-track trials before the
Patent Trial and Appeal Board. Review
proceedings offer several advantages
over validity challenges in a court
proceeding including cost, predictability,
effectiveness, speed, and the ability to
pursue strategies that would not be
feasible in court. This course explores
these factors and provides training for
participating in review proceedings and
reexaminations.
he first two days of this two-and-half day course are focused on inter partes review (IPR),
covered business method (CBM) patent review, and post-grant review (PGR). On the third
day, reexamination is addressed and ethical issues are explored that relate to review
proceedings and reexaminations. The course covers strategies, tactics, best practices and case
studies. The course is for both those who appear before the PTO in these proceedings, as well as
litigators who must deal with the increasingly common role of post-grant proceedings in the
context of disputes. Because most post-grant proceedings are conducted in conjunction with
litigation, the course emphasizes the use of these proceedings as part of litigation strategies.
T
• “This course provides a practical framework for
using post-grant tools from both the perspective
of the owner and challenger, and insight on how
they work together.”
— Matt Rabdau
IP Counsel, Fluke Corporation
• “The materials are outstanding. I will use as
reference materials in the future. Lecturers
were wide open to questions and very responsive.
Interspersing of war stories and examples kept
the presentation interesting.”
— Charles Burpee
Warner Norcross & Judd LLP
The Patent Trial and Appeal Board (PTAB)
has shifted the balance in favor of the PTO as
the preferred patent validity battlefield. Inter
partes review provides an opportunity to
challenge the validity of a patent twice: first
at the PTO based on printed publications and
subsequently in litigation based on other
available grounds. Stays are being granted
more liberally when inter partes reviews are
filed in light of the statutory requirement for
rapid completion of these new proceedings.
As a result, validity challenges are often
proceeding in serial fashion. In the first
phase of a bifurcated validity challenge,
complicated arguments regarding the prior
art can be rapidly resolved by trained
specialists at the PTAB, whereas in the second
phase, less technical arguments regarding
commercial activity or other invalidating
grounds can be resolved by a judge or jury.
This sequential approach can simplify claim
construction and narrow issues for an
◆
infringement portion of the litigation, and
thus reduce overall costs. Coordination
between review counsel and litigation
counsel is important to ensure that the review
proceeding facilitates or at least complements
litigation goals.
Validity challenges in review proceedings
offer petitioners several additional benefits
over litigation in district court or the ITC. The
PTAB broadly interprets claims, uses a more
liberal preponderance of evidence standard,
and does not presume claims to be valid.
Review trials are statutorily required to be
completed within one year after being
instituted. A challenger can rapidly eliminate
liability for past infringement, create
intervening rights to continue accused
infringement in the future, open up designaround opportunities, create a more
favorable prosecution history, defeat a charge
of willful infringement, help avoid an
injunction, bolster an inequitable conduct
defense, and sometimes enable a stay of
expensive litigation. All of this can be
achieved at a small fraction of the cost of
litigation or advantageously deployed in
conjunction with litigation.
In light of the complexity of many prior art
arguments and the benefits of the serial
validity and infringement cases, consideration
of a challenge at the PTO should not be a
back-up plan, as ex parte reexamination
often was. Rather, inter partes review should
be used prior to or concurrently with
litigation and should be considered whenever
it is available. However, reexamination also
has useful roles so its strategic uses will be
discussed along with a detailed overview of
best practices.
For patent challengers, the course provides
training to:
• Understand the critical role of review and
reexamination in the context of a dispute
and develop strategies based on
anticipated or concurrent litigation
• Make well-informed choices about when to
use a review proceeding or reexamination,
particularly in the context of litigation
• Appreciate estoppel implications of review
proceedings
• Recognize possible changes to the
construction of the claims in the litigation
based on the post-grant proceeding that
opens up design-around opportunities,
creates a more favorable prosecution
history for the purpose of claim
construction, or impacts estoppel theories
• Create intervening rights that eliminate
liability for past infringement or allow
continuation of accused infringement in
the future
• Understand the repercussions that review
can have on settlement
The course balances the perspectives of
patent challengers and patent owners so the
above items are also presented from the view
of the patent owner. Additionally, the course
provides training for patent owners to:
• Utilize post-grant proceedings to obtain a
stay or other benefits in related litigation
• Avoid, when possible, intervening rights
that arise via the cancellation or
amendment of claims
• Prepare a petition for review that complies
with all requirements, correctly uses expert
declarations, and gets granted
• Understand the timing of events in postgrant proceedings so that you are not
caught off guard
• Advantageously utilize the different
standards applied for claim interpretation
at the PTO and claim construction in
litigation as well as the differing burdens of
proof
• Navigate the maze of review procedures to
avoid unfortunately common mistakes. G
T
he resort features a state-of-the-art Hyatt
StayFit™ gym for you to enjoy during your stay.
◆
Software Patents After Alice:
Procuring, Enforcing and CBMs
15.0 Hours
Course Faculty • The faculty for this course has prosecuted scores of software-related patents, for business
methods and more traditional computer-based technical subject matters, over a collective USPTO
experience of more than 60 years. Each has also been involved in litigation and licensing of softwarerelated patents. They can provide a wide range of viewpoints from which to consider strategies for
procuring, exploiting and enforcing software patents.
Orlando, FL
8:15 a.m. – 11:30 a.m. and
1:30 p.m. – 4:45 p.m. (Sun-Mon)
8:15 a.m. – 11:30 a.m. (Tues)
ALDO NOTO
STUART HEMPHILL
DEVAN PADMANABHAN
ANDREWS KURTH LLP
WASHINGTON, DC
DORSEY & WHITNEY LLP
MINNEAPOLIS, MN
WINTHROP & WEINSTINE
MINNEAPOLIS, MN
Course Description
Director Kappos has recently stated that
patents on software are “every bit as well
deserved” as patents on air flight, electric bulbs
and such more traditional inventions. At the
same time, he acknowledges past, often
inadequate and inconsistent examination of
software patents, but points out improvements
at the USPTO for increasing examination
quality. This is a critical time to get an important
update on software patent law, given the
impact of the America Invents Act (AIA) and
recent and pending CAFC and Supreme Court
decisions, including Alice v. CLS Bank. This
course will cover the different claim drafting,
prosecution, and litigation techniques required
to address the rich variety of software-based
inventions, in the context of current law and
up-to-the-minute court decisions.
his course addresses the difficult and sophisticated task of how best to claim, prosecute,
and litigate software-based inventions in their rich variety so as to have their patents held
not invalid and infringed by the Federal Circuit. But that rich variety requires a variety of
disparate claiming, specification drafting, prosecution, and litigating techniques.
T
The America Invents Act (AIA) impacts software patents in general and business method patents
in particular. Specifically, a new inter partes review proceeding is available during litigation for
defendants to challenge covered business method (CBM) patents at the USPTO on a wide variety
of invalidity grounds. Thus far, parties challenging patents in CBM proceedings have had high
success rates.
The broad spectrum of available software
patent protection opportunities that appeared
available after State Street Bank and AT&T v.
Excel was questioned in the Bilski decisions. In
its Bilski decision, the CAFC retreated from the
“useful, concrete and tangible result” analysis to
“tied to a particular machine or apparatus” or
“transforms a particular article” tests. The
Supreme Court found this “machine-ortransformation” test useful but too narrow. It
fell back on general principles of “abstractness.”
It also declined to exclude all business methods
from patentability, but it seemed to invite their
close scrutiny. In Mayo v. Prometheus and Alice
v. CLS Bank, the Supreme Court spoke again on
abstractness, and the need to add an “inventive
concept” to the subject matter that otherwise
would fall within the classic exceptions to
patentability. Both the Alice decision and the
USPTO Guidelines based on it suggest that
computer-based inventions will be significantly
harder to get past §101 but provide little
guidance on what might make some computerbased inventions patentable. Those interested in
such inventions will need to watch as lower
courts, the PTAB (particularly in its CBM opinions)
and the CAFC, as well as the USPTO, continue to
struggle with the application of the Supreme
Court’s decisions. Constituents on both sides of
the patentability debate must hope for opinions
decoding the broad statements about
abstractness, preemption, conventional computer
components and inventive concepts into practical
guidance for drafting claims that satisfy §101 and
preparing specifications to support them.
Software-based inventions face another issue.
Some recent cases have suggested that
infringement may be avoided when infringing
activity crosses borders or multiple parties are
involved in the acts or elements comprising
infringement of a claim. The doctrine of “joint
infringement” (a/k/a“divided infringement”) as
developed in BMC Resources, Inc. v.
◆
Paymentech, Muniauction Inc. v. Thomson Corp.
and other cases continues to evolve. It poses
particular problems for proving infringement as
more computer-based inventions use processors,
storage and specialized data processing services
of others, sometimes located in the “cloud”.
Using resources in the “cloud” can involve
multiple actors and jurisdictions.
The course and text address why different
software applications (e.g., Internet-related
software) require special claim drafting,
prosecution or litigation techniques. Claim styles
and limitations designed to meet the unclear
§101 standards are discussed. This course also
explores the countercurrents arising from
concern about the quality of some business
method patents and from the open source
movement.
Legal ethics in the context of duty of
disclosure under 37 CFR §1.56 and USPTO
conflict of interest issues will be presented for at
least one hour on the third day, as currently
estimated.
L
• “Speakers were awesome, articulate, organized,
knowledgeable and friendly.”
• “The material covered was very focused and
practical. Thank you!”
• “Examples of claim types were great!”
Course Materials
Attendees will receive the Software text and
slides the first morning of class. G
et the soothing sights and sounds of the pool's
waterfall wash away the worries of the day.
◆
PRG’s Spring
Hotel
Orlando, FL • April 12-18, 2015
One Grand Cypress Boulevard
Orlando, FL 32836
Reservations:
(888) 421-1442 or (402) 592-6464
Room reservations must be made by March 20,
2015. When making your reservation, be sure to
identify yourself as a Patent Resources Group
attendee to obtain the special PRG rate. Check out
what Hyatt Regency Grand Cypress has to offer at
http://grandcypress.hyatt.com/en/hotel/home
.html and see why our $209.00 per night room
rate provides such an incredible value!
PRG’s 2015 Annual Spring
Advanced Courses Program will
be held at the lavish Hyatt
Regency Grand Cypress in
Orlando, FL.
"Meet and Greets" for Attendees and
Faculty: PRG’s casual “Meet and Greets”
will be held on the first evenings of class —
Sunday, April 12 and Thursday, April 16.
These informal get-togethers provide an
opportunity for networking, while enjoying
complimentary beverages and light hors
d'oeuvres. Spouses, children, and guests of
attendees and faculty are welcome to attend.
Transportation: The Hyatt Regency Grand
Cypress is approximately 18 miles from
Orlando International Airport (MCO), 77
miles from Tampa Airport (TPA), and 240
miles from Miami International Airport (MIA).
The Hyatt Regency Grand Cypress offers both
valet parking and self-parking.
An Outstanding Venue!
orld-Class Comfort and Style
This luxury resort is an expansive,
secluded oasis in beautiful Orlando,
Florida. The 1,500-acre resort offers
many opportunities to unwind and is also just
minutes from Orlando's theme parks and other
attractions.
W
Swim in the half-acre lagoon-style swimming
pool or enjoy water sports activities on Lake
Windsong. Play a round of golf at one of the
resort's four Jack Nicklaus Signature Design
courses or try tennis, rock climbing, jogging, or
biking. Relax with a massage, facial, or
manicure at the salon or get in a workout at
the Hyatt Stay Fit gym. And the Hyatt Regency
Grand Cypress' world-class restaurants serve
wonderful cuisine from around the world.
You'll also enjoy complimentary high-speed
Internet access; a full-service, 24-hour business
center; gift shop; and concierge. For more
information about the Hyatt Regency Grand
Cypress, go to:
http://grandcypress.hyatt.com/en/hotel/home.html
DON'T MISS THIS DEAL!
Room rate: The sleeping room rate available to
PRG attendees is only $209.00 per night, single
or double, plus tax. And the resort fee is being
waived for PRG attendees!
◆
REGISTRATION
and Seminar Series
Orlando, FL • April 12-18, 2015
Three-Day Courses:
Tuition for each three-day course is
$2,195 through March 2
and $2,295 after that date
❍ Art & Science of Patent Searching Patentability, Validity & Infringement
❍ Art & Science of Patent Searching and
Optional Patent Searching Workshop
(combined course and workshop is
$2,590 through March 2, 2015 and
$2,690 after that date)
❍ Chemical Patent Practice
❍ Comprehensive PCT Practice: How to
Master Its Challenges
❍
GNEW COURSE European Patent Practice:
REGISTRATION OPTIONS:
Mail or Overnight:
1725 Jamieson Avenue
Alexandria, VA 22314
FAX: (703) 683-1895
ONLINE: www.patentresources.com
You may register online or by fax, mail or courier.
You may submit tuition either by check, payable
to Patent Resources Group, Inc., or by credit card
(charges are authorized by your completion of
this form). The course tuition does not include
hotel accommodations or meals, but does
include all instructional materials, and morning
and afternoon refreshments, as well as PRG’s
“Meet and Greets.”
Early Registration Deadline: March 2, 2015
Final Registration Deadline: March 20, 2015
Loyalty Program members
save $200 on tuition
for 3-day Advanced Courses,
$100 for 1-day Seminars, and
$50 on half-day Seminars
Seminar Series:
(see page 38 for more information)
Tuition for each one-day seminar is $895;
tuition for each half-day seminar is $495
April 15, 2015 (Wed) — One-Day Courses
❍ First-Inventor-to-File Law and Ramifications
Under Sections 102 and 103: An Intensive,
Detailed Analysis of What Constitutes Prior Art
Under the Radically Changed Statute
❍ Section 103 and Obviousness: Capitalizing on
CCPA and Early Federal Circuit Precedent
April 15, 2015 (Wed) — Half-Day Courses
❍ Ethical Issues in Patent Practice: From Client
Intake to Paying Maintenance Fees to
Assisting in Litigation - Morning
❍ Professionalism in Patent Practice - Afternoon
What Every U.S. Practitioner Should Know
❍ Patent Due Diligence in the AIA Era
❍ Patent Infringement Litigation
❍ Post-Grant Patent Practice: Review
Proceedings and Reexamination
❍ Software Patents After Alice: Procuring,
Enforcing and CBMs
❍ Crafting and Drafting Winning Patents
❍ “Designing Around” Valid U.S. Patents
❍ Drafting Patent License Agreements
❍ Federal Circuit Law (2013-2015)
❍
GNEW COURSE Hatch-Waxman and
Biosimilars: A Total Immersion Course
Encompassing Strategies for Prosecution,
FDA Regulation, Post-Grant Challenge,
Litigation, and Appeal
❍ Patent Drafting & Prosecution Based on a
Single EPO/USPTO Specification
Two-Day Course:
Tuition for this two-day course is $2,910 and
$3,205 if you plan to take the CPVA exam;
tuition is the same regardless of registration date
(Loyalty Pricing does not apply for this course.)
April 16-17, 2015 (Thurs-Fri)
❍
GNEW COURSE Certified Patent Valuation
Analyst – without exam
For information about registration deadlines; cancellation, transfer and substitution privileges; CLE; and other details,
go to: www.patentresources.com or call us: (703) 682-4860.
Brochure Code: A15M1
I am an ACTIVE member of a State Bar that requires mandatory CLE hours. My State(s) & my Bar ID number(s) are:
1. __________ _________________________
STATE
ID NO.
2. ___________
STATE
______________________
ID NO.
❑ MR. ❑ DR. ❑ MS. ❑ PROF.
Name ___________________________________________ Title ________________________
PLEASE PRINT
Tel _____________________________________________ Fax ________________________
email ________________________________________________________________________
Organization ______________________________________ Suite or Mail Stop No. ___________
❑ HOME
ORG.
Street Address ❑_________________________________________________________________
City/State ________________________________________ Zip Code ____________________
Charge $______________________ to:
❑ VISA ❑ MasterCard ❑ American Express
PRINT Name of Cardholder
❑ Corporate Card ❑ Personal Card
❑ Government Card
Corporate Customer Code (if applicable) ___________________
Credit
Card # _______________________________
SIGNATURE of Cardholder
If the credit card billing address is not the same as on this form,
enter the billing address here:
Exp. ________/__________
❍ Certified Patent Valuation Analyst – with exam
◆
PRG’s Seminar Series —
Another Outstanding
Educational Opportunity!
We launched our Seminar Series courses in the summer
of 2014. Due to popular demand, we're back with a
combination of returning and new Seminars in 2015!
Unlike our intensive 3-day Advanced Courses, our Seminar
Series provides courses on current patent topics that are
more appropriately handled through a shorter course
length, but with the same outstanding PRG quality.
The first Seminar Series of 2015 will be held in
conjunction with our Spring 2015 Advanced Courses at
the Hyatt Regency Grand Cypress, with the seminars
being held on April 15, the day between our two 3-day
Advanced Course sessions.
Additional Seminar Series will be held in:
June 8-10 and 12, 2015 — Braintree, MA
July 2015 — California
September 8-11, 2015 — New York, NY
Check our website for more details on these upcoming
Seminars!
Our April 2015
Seminar Series offerings:
Orlando, Florida
April 15, 2015
G NEW SEMINAR
Section 103 and Obviousness: Capitalizing on
CCPA and Early Federal Circuit Precedent
Faculty: Tom Irving, Lauren Stevens, Jill MacAlpine, and
Deborah Herzfeld – Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
This course will provide guidance to patent counsel on
leveraging decisions by the Court of Customs and Patent
Appeals (CCPA) and the Federal Circuit in the application
of the Section 103 obviousness standard. The panel will
examine lessons learned through CCPA and early Federal
Circuit decisions and offer strategies for evaluating
obviousness, handling evidence and overcoming
assertions of unpatentability.
First-Inventor-to-File Law and Ramifications
Under Sections 102 and 103: An Intensive,
Detailed Analysis of What Constitutes Prior Art
Under the Radically Changed Statute
Faculty: Paul Gardner - Patent Resources Group
The major changes to United States patent law made by
the America Invents Act are those introduced by
rewritten §102 and revised §103, and their impact on
the universe of prior art that renders claims unpatentable
for lack of novelty or for obviousness. This seminar
focuses on those changes.
G NEW SEMINAR Ethical Issues in Patent
Practice: From Client Intake to Paying
Maintenance Fees to Assisting in Litigation
Faculty: David Hricik - Taylor English
Note: This is a 3-hour course that will be held the
morning of April 15.
Through interactive discussion, videos, and other means this
course will analyze many topics related to ethical issues in
patent practice, including identifying conflicts of interest in
patent prosecution, the duty of confidentiality, malpractice
claims, an update on inequitable conduct, and more.
G NEW SEMINAR
To register for any of these and future offerings
in our Seminar Series, please visit our website at
www.patentresources.com. You can also
register for the Orlando Seminar series using the
registration form on page 37 of this catalog.
Professionalism in Patent Practice
Faculty: David Hricik - Taylor English
Note: This is a 3-hour course that will be held the
afternoon of April 15.
Through interactive discussion, videos, and other means this
course will analyze professionalism issues that commonly
arise in patent practice, including civility and professionalism
in communications with examiners, substance abuse
among practitioners, mental health and impairment,
eliminating bias or prejudice in practice, and more.
◆
Pass The Patent Bar Exam
With PRG – Your Choice
For Exam SUCCESS
PRG is 100% focused on helping you to pass the
exam, and our Patent Bar Prep solution is unlike
any others on the market. Our “total solution”
for patent bar preparation provides you with an
unsurpassed portfolio of tools for success:
• Attendance at one of our classroom courses,
offered throughout the year in major cities
around the U.S.
• One year of access to our online course,
allowing you to review the material either
before or after the week-long classroom
course
• One year of access to our integrated online
patent bar exam prep software — ExamWare®
— which has no equal on the market today
Registration is open now for
these 2015 classroom sessions:
• January 26-30
Fort Worth, TX
• June 8-12
Braintree, MA
• March 16-20
Atlanta, GA
• August 3-7
Minneapolis, MN
• May 27-31
Washington, DC Metro area
We also plan to offer the course in California in
November 2015, and if you can't attend a live
session, the course is also available online!
• One year of access to social learning and
crowd-sourcing with the PRG Patent Bar Exam
Prep Yammer group
• The PRG guarantee — as long as you are
actively studying for the Exam, we'll be there
for you
You get all of this for only $2,789!
(And only $1,839 for students!)
Sign up today at www.patentresources.com.
◆
The PERFECT COURSE
For Patent Support
Professionals!
Patent Administration: A Foundation for Success
is a complete and thorough 4-day certificate
program designed to provide patent paralegals,
secretaries, and administrators with the key
knowledge they need to effectively support a
patent prosecution practice.
We’ll cover the following critical topics:
• Day 1 – Patent Law Essentials: Firm
understanding of the fundamentals of patent
law, including changes due to the America
Invents Act (AIA)
• Day 2 – PCT: An introduction to Patent
Cooperation Treaty (PCT) practice and filing
• Days 3 and 4 – Managing Patent
Prosecution: Practical tips and advice that can
be applied on a daily basis to save time and
ensure success in interactions with the USPTO
You can attend all 4 days for the low cost of
$995.00. Or you can attend days 2 through 4
for only $795.00.
Let your support team know about this unique
opportunity so that they can get the training they
need to be leaders in effective patent
administration!
They can sign up today at
www.patentresources.com.
In 2015, we’ll be offering 4 sessions of
our Patent Administration program:
• May 27-30
• September 8-11, 2015
Washington, DC Metro area
New York, NY
• August 3-6
Minneapolis, MN
• November
City to be
determined, CA
◆
Learn How To Obtain
Valuable PATENT PROTECTION
For Your Clients
You’ve got your degrees, and you’ve passed
the patent bar exam. You’ve even been in the
workplace for a few years. But that doesn’t
mean you know how to craft a good patent
application.
At PRG’s 2015 Winning Patents Workshop,
less-experienced practitioners will learn how to
write and prosecute more valuable patent
applications that will provide better protection
for their clients.
The Workshop will be offered in California
in July 2015 and in the Washington, DC
metropolitan area in August 2015.
Check our website for details!
www.patentresources.com
Attendees at our 2015 Workshops
will learn:
• The changes, nuances, and ambiguities
introduced by AIA Section 102 and the rules
promulgated by the USPTO for
implementing the new law
• What ought to be said – and not said – in
the specifications, claims, and responses to
Office actions, and why
• How recent Federal Circuit case law impacts
best practices for patent application
preparation and prosecution
The end result? You’ll be a knowledgeable
associate who can maximize the value of
patents obtained for your firm’s clients.
(And you’ve saved your firm money because a
senior attorney did not have to provide you
with comparable training!)
◆
June 8-10 and 12, 2015
Seminar Series
Braintree, MA
Hyatt Place Boston/Braintree
September 8-11, 2015
Seminar Series
New York, NY
Executive Conference Center
March 16-20, 2015
Patent Bar Review Course
Atlanta, GA
July 2015
Winning Patents Workshop
California
Check PRG website for
dates, city, and venue
September 8-11, 2015
Patent Administration:
A Foundation for Success
New York, NY
April 12-18, 2015
Annual Spring Program
Advanced Courses in Patent Law
Orlando, FL
July 2015
Seminar Series
California
October 13-19, 2015
Annual Fall Program
Advanced Courses in Patent Law
Santa Ana Pueblo, NM
Hyatt Regency Tamaya
April 15, 2015
Seminar Series
Orlando, FL
August 3-7, 2015
Minneapolis, MN
Hyatt Place
November 2015
California
May 27-31, 2015
Washington, DC (Alexandria, VA)
Westin Alexandria
August 3-6, 2015
Minneapolis, MN
Hyatt Place
January 26-30, 2015
Fort Worth, TX
Hyatt Place Ft. Worth
Historic Stockyards
May 27-30, 2015
Washington, DC (Alexandria, VA)
Westin Alexandria
June 8-12, 2015
Braintree, MA
Hyatt Place Boston/Braintree
August 2015
Winning Patents Workshop
Washington, DC metropolitan area
November 2015
California
◆
P
atent Resources Group, the choice of every generation of patent attorneys since 1969, now offers
customized ON-SITE training for selected courses on a negotiated basis!
This is the perfect option for corporations that have 10 or more employees who need the same training.
We'll come to your location and will customize the content as needed to meet your specific needs. If you
prefer, we can also offer these courses remotely through webconferencing or videoconferencing.
Contact Beth Jones, Senior Director of PRG at 571-414-0670 to learn more.
PRG is currently offering these courses* ON-SITE:
Patent Administration: A Foundation for Success
This is a complete and thorough 4-day certificate course designed to provide patent paralegals, secretaries, and
administrators with the key knowledge they need to effectively support a patent prosecution practice. Topics covered
include the fundamentals of patent law, an introduction to PCT practice, and managing patent prosecution.
Art and Science of Patent Searching: Patentability, Validity & Infringement
This course comprehensively teaches how to conduct a professional patent search. The materials and content will be
understood by anyone, from the inexperienced to advanced practitioners. The course is perfect for patent attorneys
and agents, inventors, paralegals, or research managers — anyone who will be involved in conducting searches or
commissioning searches.
G NEW COURSE Patent Law for Scientists and Engineers
This course will provide your technology experts with a solid understanding of the fundamentals of patent law.
Representative topics to be covered include the patent procurement procedures at the USPTO, the parts of a patent,
claim drafting strategies, and key elements of sections 102 (novelty) and 103 (non-obviousness). This enhanced
understanding of patent law will allow this team, which is critical to your continued ability to innovate, to add even
more value to your organization.
* Interested in having other courses taught on-site at your location? ASK US!
Pre-sort Std.
U.S. Postage
PAID
WAM
1 7 2 5 J A M I E S ON AV E N U E
ALE XANDRIA, VA 22314
®
IN PATENT
ANNUAL SPRING PROGRAM
LAW
Register today at www.patentresources.com
The World’s Best Patent Law Courses
at a Spectacular Venue!
April 12-18, 2015
Patent Resources Group provides the industry's leading patent law education programs. The company has
taught patent law and related courses to over 40,000 patent attorneys, agents, engineers and scientists since 1969.
A15M1

Spring Program IN PATENT LAW

Transcription

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