Please note that the faculty members listed for this course are subject to change prior to the actual course date.
Collectively, over 75+ years of experience litigating, prosecuting and teaching about patents.
Why Should You Take This Course?
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 practitioners drafted and prosecuted the application. Compounding the problem is the time pressure created by moving to a first-inventor-to-file system under the recently enacted 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 nonprovisional patent applications to avoid these pitfalls.
This 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 §112(a), f/k/a 112, para. 1, despite the time pressure created by moving to a first-inventor-to-file system under the AIA.
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-plus-function 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
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. 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, 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.
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.
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 our four-day workshop designed specifically for them, Winning Patents Workshop. For details visit our website at www.patentresources.com.
A comprehensive, one-volume course Textbook, entitled Crafting & Drafting Winning Patents, and a bound set of lecture slides, are definitive on the subject and will be given to registrants at the course. The Textbook and slides are constantly updated and revised to include recent decisions and changes in the law – including the applicable provisions of AIA.