Patent Claim and Specification Drafting and Prosecution
Avoiding Traps That Lead to Royalty Free Licensing of Patented Technology
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on the impact of case law on daily U.S. patent practice. The panel will offer sound principles to prepare and prosecute patent applications to avoid traps for the unwary or careless claim terminology and untoward language in the specification. The panel will also give real world examples of "worst" practices that have led to the destruction of U.S. patent rights.
Outline
- Impact of Federal Circuit and PTAB case law on daily U.S. patent practice
- Drafting claims
- Drafting specifications
- Litigating claims
- Defending against patent suits
- Licensing patents
- Evaluating the claims of third-party U.S. patents
- Best practices of fundamentally sound principles to prepare and prosecute a U.S. patent application
- Avoiding traps for the unwary
- Avoiding careless claim terminology and untoward language in the specification
- Real world examples of "worst" practices that have led to the destruction of U.S. patent rights
Benefits
The panel will review these and other high profile issues:
- How can a single word in claim language and specification lead to the demise of U.S. patent rights?
- How do Federal Circuit and PTAB decisions impact drafting claims and specifications?
- What steps can counsel take to avoid careless claim terminology and mistakes in the specification?
Faculty
Krista Aiello
Assistant General Counsel-Patents
Unilever
Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry... | Read More
Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry including beauty and personal care products and compositions (bars, liquids, sanitizers, shampoos, conditioners, etc.). She is skilled in Patent Prosecution, Freedom to Operate (FTO), Patent Portfolio Analysis, Patent Law, Technology Transfer, NDA/CDAs, and other aspects of Intellectual Property.
Close
Adriana L. Burgy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the... | Read More
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. From a patent prosecution perspective, she has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios.
Close
Anthony M. Gutowski
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent... | Read More
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations.
Close
Thomas L. Irving
Partner
The Marbury Law Group
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
Close