Drafting and Prosecuting Patent Applications to Survive a Markman Hearing: Claim Construction Case Studies
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide patent counsel for patent drafting to survive a Markman hearing. The panel will provide claim construction case studies, examining a district court case for do's and don'ts when drafting and prosecuting a patent application. The panel will offer tips and pointers on what to do to minimize the impact of what patent counsel have to say and do in order to get the patent granted.
Outline
- Claim construction case studies
- Best practices
- Clearly defining terms
- Clear and concise claim terms
- Consistent use of terms
- Consider including definitions of claim terms in specification
- Use of dependent claims and multiple independent claims of varying scopes
Benefits
The panel will review these and other key issues:
- How can practitioners draft and prosecute patent applications and claims to survive Markman hearings?
- What claim drafting strategies can patent counsel employ with the Markman hearing in mind?
- What steps can counsel take to improve the likelihood that claims will be interpreted as intended?
Faculty
Roy P. Díaz, PhD, JD
Assistant Vice-President - DIPI International Head of Instrumental Cosmetics & Digital
L’Oréal Research & Innovation USA
Dr. Díaz is the Assistant Vice-President - DIPI International Head of Instrumental Cosmetics & Digital for... | Read More
Dr. Díaz is the Assistant Vice-President - DIPI International Head of Instrumental Cosmetics & Digital for L’Oréal Research & Innovation USA. He started his career as a patent attorney in one of the top patent law firms in the US. Dr. Díaz then joined Intellectual Ventures where he built and developed patent portfolios mainly in the fields of medical devices, wearable technology, digital transformation technology, optics, and advanced materials. Afterwards, he co-founded Díaz|Cook an IP law firm providing clients counseling on the procurement, enforcement, management, and monetization of intellectual property rights and assets.
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Michelle E. O'Brien
Partner, Head of Life Sciences
The Marbury Law Group
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in... | Read More
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.
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Nichole M. Valeyko
Director
Merck & Co.
Ms. Valeyko is a registered U.S. Patent Attorney and has acted as IP counsel for over 15 years. She is currently a... | Read More
Ms. Valeyko is a registered U.S. Patent Attorney and has acted as IP counsel for over 15 years. She is currently a Director in the IP Legal group at Merck & Co., Inc. in Rahway, New Jersey, where she is the Committee Chair for the Merck Legal Network Diversity Committee and head of the U.S. Patent Practice Committee. Ms. Valeyko holds a Bachelor of Science in Biology from Virginia Tech, a law degree from Seton Hall School of Law, and a Master of Science in Biotechnology from Johns Hopkins. She is a member of the New York and New Jersey State Bars, and is a registered patent attorney of the U.S. Patent and Trademark Office. Prior to joining Merck, Ms. Valeyko was in private practice at several IP boutiques based in New Jersey, where she handled prosecution, litigation, and opinion matters. At Merck, she has a broad-based intellectual property practice involving patent prosecution, patent counseling and procurement, transactional matters, and due diligences.
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