Please note that the faculty members listed for this course are subject to change prior to the actual course date.
This 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 to enhance such possibilities as:
- obtaining broad claim construction for literal infringement purposes, particularly by avoiding "vile" language (i.e., lightning rods for noninfringement and §112, para. 2 invalidity) that is best described as patent profanity;
- utilizing the doctrine of equivalents to the extent that the doctrine still exists;
- surviving Festo;
- avoiding a best mode problem;
- destroying, not rebutting, a defective prima facie case of obviousness in our current post-KSR world, including illustrations from several real U.S. patents prosecuted by a faculty member;
- obtaining the broadest possible claims by avoiding too many and unduly narrow limitations;
- obtaining claims that will be directly and literally infringed by competitors rather than by customers;
- proving literal infringement of claims in litigation;
- obtaining claims infringed by “downstream” infringers; and
- preparing and prosecuting the application to avoid inequitable conduct.
For example, the Federal Circuit’s post-Phillips claim construction decisions continually signal patent practitioners on how the court is likely to construe claims. 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 a broad claim construction. This course, presented by an “all-partner” faculty, each with a significant depth of experience, suggests many practical approaches with those objectives in mind.
Comment from previous attendee:
“Fresh ideas about patent prosecution. Incorporated the up-to-the-day case law.”
We discuss how to establish patentability and validity under §103 in the post-KSR world, where knowledge and direction equate power. Case studies, presented on the last day, involving real U.S. patents, will provide a framework for creative thinking on the law of prima facie obviousness.
Comment from previous attendee:
“The real-life examples were excellent.”
“This is a must do course for chemical patent attorneys. This covers things you did not learn in law school. Without this course, it would take years to accumulate this knowledge and even then, I probably would have difficulty seeing the big picture.”
We will look closely at the guidelines for “best mode” disclosure from a substantive and ethical point of view. In addition, we consider the Federal Circuit inequitable conduct decisions, 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 one hour of ethics that is otherwise sometimes hard to find. The hour of ethics discussion should be from 10:00 to 11:00 a.m. on the first day (as currently estimated). The last day will include a discussion of a hypothetical chemical patent problem that synthesizes and reinforces the teachings of the class.
Comments from previous attendees:
“Great speakers – masters of the material.”
“The instructors have a great amount of insight to the case law due to their own experience.”
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 determining claim scope and enforceability.
Comments from previous attendees:
“The course was an excellent balance of considerations and strategies for prosecution and litigation. Very good depth of information.”
“Updates on current case law combined with updates on current response strategies were very helpful, as always. The comparison between strategies and litigation results were also helpful to show the efficiency of the strategies.”
“A great course, and one which should continue. It’s a great update and I’d recommend it for every practicing patent attorney in the chemical arts. I have been attending the seminar about once every 4 years, which I think is a pretty good practice.”