Introduction

• Key Differences between U.S and European Patent Systems

Understanding the Goal: Prosecution with Eye to Enforcement

• U.S. Enforcement Options
  - Venue, Forum Shopping, and the Eastern District of Texas
• The Discovery Process
  - Patent issues that arise from discovery of your files
  - Practical tips for when dealing with technical persons on patent matters
• Claim Construction / Markman Hearings

Understanding U.S Patent Reform (AIA)

• The First Inventor to File System
  - New Filing strategies in view of the AIA
• The new definitions of prior art

Portfolio Development

• Avoiding Inventorship Mistakes
  - Determining inventorship - what questions to ask and what to record in your life
  - Interplay between inventorship and ownership
• Avoiding Inequitable Conduct Allegations
  - The duty to disclose and Therasense
  - The Supplemental Examination procedure
• Filing Strategies

Drafting a Global Application

• Claims
  - Ensuring broad claim scope
  - Considerations for means-plus-function claims
  - Definitions and consistent use of terms
  - Enforcement considerations. - Drafting a claim that will be infringed. - Drafting claims with an eye towards a Markman hearing.
  - Effective use of dependent claims
• Detailed Description
  - Written Description and Enablement. - Take home lessons in view of recent case law developments.
  - Best mode after the AIA
  - Cascading Disclosures
  - Dealing with claim construction issues
• Patentable subject matter
  - Considerations Post-Bilski

Program:

Patent Prosecution

• Patent prosecution tracks
• Obviousness After KSR
  - Prosecution tips
  - How and when to attack an anticipation rejection
  - Is the prior art enabled?
  - The high standards for inherency
  - The prima facie case of obviousness
  - How to attack? How to rebut?
  - Consequences and methods
  - Effective use of affidavits and secondary evidence
  - Examiner interviews
• RCEs, Continuations, and Divisionals
  - When to use each
  - Consequences on patent term
  - Affect on examination / prosecution strategies
• Double Patenting / Restriction Practice
• Appeals to the Board of Patent Appeals and Interferences
  - When is a case ready for appeal?
  - Preparing for appeal
  - Oral arguments

U.S Litigation

• Determining Infringement
  - Direct, Contributory, and Inducement
  - Literal and Doctrine of Equivalents
• Attorney-Client Privilege Issues
  - Applicability to European Patent Attorneys
• Pre-litigation and Opinion Issues
• Strategic Use of Post Issuance Procedures
  - Certificates of corrections
  - Reissue
  - Post-Grant Review (The US Opposition)
  - Inter partes review and reexamination

Program: