Patent Prosecution

B559 is taught by K. Gandy

Patent prosecution is the vital precursor to your client s realization of value through product sales, licensing, litigation or other means. Effective patent prosecution must be forward looking with a fine understanding of how the US Patent Office and Federal courts interpret claims and assess the application for patentability and infringement determinations. A complex set of federal statutes, regulations, and case law is involved. This course will provide a foundational understanding of these requirements and will emphasize drafting and advocacy techniques for successfully navigating the US Patent Office to a patent that provides value to your client.

The course begins as most representations begin, focusing upon the initial client contact and matters that must be well handled at the start. Issues related to subject matter conflicts and party conflicts will be addressed. This is followed by instruction upon how to work with clients (inventors) to understand and develop their invention disclosures to enable maximal protection, particularly in view of developing enablement and written description requirements of the law.

The course then turns to providing a foundation relating to the statutes, regulations, patent office rules and case law that govern the requirements of an application for patent. This foundation is then quickly put to work in practical drafting and review sessions for the major patent application components: claims defining the scope of the invention (a major focus of the course); the specification containing a detailed written description sufficient to enable others to make and use the invention; and, the background section setting up the need for the invention. Several in-class and take-home practical sessions will be given to provide hands on drafting experience designed to simulate real world experiences as a patent attorney.

The prosecution of patent applications typically involves a series of exchanges between the patent attorney and the Patent Office Examiner. Arguments are forwarded with respect to whether the claimed invention is deserving of patent protection. These exchanges explore whether the claims define an invention which meets the statutory requirements of novelty and nonobviousness set forth in Title 35 of the United States Code. It is the Examiner& 039;s job to make sure that no "unworthy" inventions proceed to patent. It is your job to advocate that the claimed invention is patent-worthy and to help the client make key decisions whether the claims need to be amended to more fully distinguish from the prior art. Again, practical drafting sessions will be conducted.

After an application has been successfully prosecuted with a given set of claims, there are still other issues that need to be considered. Should another related application be filed to pursue additional protection through claims that are worded differently? "Continuing" patent application practice affords the opportunity to do this, and the related principles and procedures will be addressed in the course.

Patent Law is a prerequisite for this course.