4 Day Online United States Patent Practice Training Course: Get Up to date with the Latest Court Decisions and Best Practices (February 27, 2023 March 2, 2023)

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Dublin, Jan. 31, 2023 (GLOBE NEWSWIRE) -- The "US Patent Practice Training Course" conference has been added to ResearchAndMarkets.com's offering.

The area of US patent practice can be complex and confusing. Are you up to date with the latest court decisions and best practice?

This highly interactive seminar will give you a comprehensive understanding of the US patent system and enable you to work more effectively with your US counterparts.

It will highlight the important differences between US and European patent practice and provide you with the opportunity for in-depth discussions about prosecution practice and procedure throughout the two days. The programme will cover important tactics to get the most out of your prosecution dollar, and provide lots of claim drafting tips to give your application a solid footing for US prosecution and enforcement.

This event will bring you right up to date on the latest legislative changes under the America Invents Act (AIA), as well as all the recent and pending US Supreme and other court decisions of importance. You will also get to grips with current happenings in the USPTO that could impact on your role.

Key topics covered:

  • Legal framework

  • Claim construction

  • US patent prosecution practice and procedure

  • The written description, enablement and best mode requirements

  • Definiteness

  • Statutory subject matter

  • Novelty and prior art

  • Obviousness

  • Provisional and continuing applications

  • Restriction practice and obviousness

    • Type double patenting

  • USPTO programs

  • Patent Law Treaty implementation

  • Duty of candor

  • Infringement

  • Patent litigation and damages

Why you should attend

This is a fantastic opportunity to take full advantage of the open seminar environment that this event offers. With a high degree of interaction with the expert trainers as well as other participants, this is a great forum for discussing your particular questions and concerns. Offering a wide-ranging and detailed understanding, this seminar covers what every European patent practitioner should know about US patent practice.

Who Should Attend:

  • Corporate patent counsel

  • Patent attorneys from corporate and private practice

  • Intellectual property consultants

  • Patent managers and engineers

  • Company legal advisers

  • All those involved with patent protection in the United States

Key Topics Covered:

Legal framework

  • Statutes and rules

  • Courts and agencies

  • Requirements for patentability

Claim construction

  • Phillips - broad multifaceted inquiry

  • Claim construction rules and guidelines

  • Claim construction in the USPTO

US patent prosecution - general flow of events

Written description

  • 'Possession' of claimed invention

  • Ariad - increased focus on what inventors actually did

  • Written description guidelines

  • Negative limitations


  • Wands factors - to show whether the amount of experimentation necessary would be 'undue'

  • Interplay with written description requirement

Best mode

  • Effect of the AIA


  • Nautilus - the 'reasonable certainty' standard

  • USPTO practice

Means-plus-function claiming

Statutory subject matter

  • Supreme Court jurisprudence

  • USPTO guidance

  • Court of Appeal


  • Impossibility

  • Judicial interpretation

Patent Law Treaty implementation

Novelty and prior art

  • Anticipation

  • Pre-AIA - 'first to invent'

  • Post-AIA - 'first to file'


  • Graham and KSR

  • USPTO practice - prima facie obviousness

  • USPTO KSR guidelines

  • Method claims

Provisional applications

  • Pre-AIA vs post-AIA

Continuing applications

  • Continuations, divisionals, continuations-in-part

Restriction practice

  • Restriction requirement

  • Restriction vs Election of Species

  • Rejoinder

Patent term and PTA

Obviousness - type double patenting

  • Gilead cases

  • Terminal disclaimers

USPTO programs

  • Terminal disclaimers

Patent Law Treaty implementation

Obviousness - type double patenting (continued)

  • Accelerated examination, track one, patent prosecution highway

  • First action interview, after-final consideration, pre-appeal brief request for review pilot programs

Duty of candor

  • Citation of references

  • Inequitable conduct


  • Conception

  • Joint inventorship

  • Interference practice

  • Derivation actions

Post-issuance practice

  • Re-examination and re-issue

  • Inter partes review

  • Post-grant review

  • Covered business method review

  • Supplemental examination

  • Certificates of correction


  • Direct Infringement

  • Contributory infringement and inducement

  • Extraterritorial infringement

  • Exhaustion

Doctrine of equivalents

  • Function/way/result test

  • Festo - prosecution history estoppel

  • Licensing


  • Opinions

Declaratory judgment

  • Burdens of proof

Patent litigation and damages

  • Remedies

  • Entire market value

  • Injunctive relief


Nicole Reifman
McDonnell Boehnen Hulbert & Berghoff LLP

Nicole Reifman is a partner with McDonnell Boehnen Hulbert & Berghoff LLP, Chicago where she has gained diverse experience in obtaining, evaluating and enforcing intellectual property.

She has experience in all phases of patent preparation and prosecution, and concentrates in representing clients in the mechanical and electrical arts, including drive train systems, medical devices, electromechanical, telecommunications and material sciences matters. She also has experience in all phases of patent litigation.

She provides counselling regarding the procurement, enforcement, and licensing of intellectual property rights, including trademark, trade secret and copyright issues. She actively manages trademark portfolios and develops brand building and protection strategies for her clients. She is also the Recent Developments Editor of the University of Illinois Journal of Law, Technology, and Policy.

James Suggs
McDonnell Boehnen Hulbert & Berghoff LLP

James Suggs is a partner in the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff LLP, located in Chicago, where he practices patent law.

He prepares and prosecutes patent applications, prepares opinions of counsel, performs patent due diligence studies and provides patent counselling and portfolio management services in a wide variety of technologies, including chemical, pharmaceutical, materials science, semiconductor, integrated optics, optical fiber, and related technologies.

His litigation experience includes federal district court and appellate practice as well as advocacy in forums such as the International Trade Commission, and spans a diverse range of technologies.

For more information about this conference visit https://www.researchandmarkets.com/r/9qpp0v-patent?w=12

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