Patent Law Practice Center

PLI’s 6th Annual Patent Law Institute

PLI’s 6th Annual Patent Law Institute is on February 15-16 in New York (and via web) and on March 19-20 in San Francisco.  The Institute is designed to be of ultimate practice value to all three subgroups in the patent law community:patent prosecutors, patent litigators, and strategic & transactional lawyers. The two-day schedule includes 6 plenary sessions of interest to all patent lawyers and a separate breakout track for prosecution, litigation and strategic/transactional lawyers. Each track features six sessions focused on each of those three practice subgroups. You design the 2-day schedule that best meets your professional needs.

Do not miss this unique opportunity to sharpen your practice skills and to network with federal judges, USPTO officials, in-house counsel and outstanding outside patent lawyers.

What you will learn

Plenary sessions include:

• Keynote Address by Robert L. Stoll, Commissioner of Patents
• A dialogue with Federal Circuit Chief Judge Randall R. Rader
• Corporate counsel divulge critical issues that keep them awake at night
• A distinguished panel of Judges from critical U.S. District Courts
• The practice impact of recent Supreme Court and Federal Circuit decisions
• Special Feature: Earn 1 hour of legal ethics credit



Click here for more information about the Patent Law Institute

 

Fundamentals of Patent Prosecution Highlights: Claim Drafting & Preparation of Patent Application

Another great presentation I sat in on today at Fundamentals of Patent Prosecution 2011 was an Introduction to Patent Drafting. The speaker was Willian Frommer of Frommer Lawrence & Haug .  Here are the highlights from the discussion:

 Frommer suggested that whenever possible, the attorney should interview the inventor to obtain a detailed understanding of the invention and that an attorney’s role is to learn of a specific embodiment of the invention, but also to predict possible alternative embodiments and implementations that may be brought to market. He offered two practice tips: 1) Courts will sometimes limit a claim to a preferred embodiment or even invalidate claims that are broader than the disclosed embodiments.  The more embodiments, the better.  Try to anticipate competing products that may affect your client’s market and 2) The inventor is often the best source for alternative embodiments. (more…)

Fundamentals Of Patent Prosecution 2011 Highlights: Boot Camp for Claim Drafting & Amendment Writing

I’m sitting in this morning on Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing and the first speaker of the day is John O’Brien, Co-Chair of the program and Practice Center Contributor, who provided tips on how to take an effective invention disclosure.  Here are some highlights from the presentation:

O’Brien discussed Engagement Letters and how the letter may minimize allegations made by a client that the lawyer improperly mishandled the matter in question.  He provided a suggested Engagement Letter Checklist that included: 

• Introduction with general description of matter
• parties included in representation
• any additional parties in matter who are not represented
• specific areas in which representation will be included
• specific areas which representation will not include
• establish the expectations
• detailed payment for services and timing for payment
• grounds for attorney termination
• primary responsible lawyer (more…)

10 Mistakes That Will Kill Your Patent in Litigation & How To Avoid Them

Selected Aspects Of The Impact Of Patent Application Drafting And Prosecution

Louis S. Sorell, Patent Counsel at Google Inc. in New York City, sent in this article he wrote discussing issues that arise during patent prosectuon which may impact subsequent litigation.  Sorell will be speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011.  The following is an excerpt from the article:

Introduction

Issues often arise during patent prosecution which impact the course of subsequent patent litigation.  This paper discusses several specific areas in which decisions made during prosecution may particularly impact subsequent litigation.

A.   Background

With respect to the claim language itself, the words of the claims govern and are generally given their ordinary and customary meaning. The focus of this analysis is “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.” (more…)