PRG Fall 2014 Advanced Courses Catalog

ANNUAL FALL PROGRAM
PATENT RESOURCES GROUP
Register now at www.patentresources.com

THE CHOICE OF EVERY GENERATION OF PATENT ATTORNEYS SINCE 1969.
Fall Program
Caesars Palace Las Vegas, NV
September 27 October 2, 2014
Choose from 10 of the best advanced patent law courses. See page 3.
Take advantage of our amazing room rate, available only to PRG attendees! See page 26.
Enjoy a one-of-a-kind venue. See page 26.
Check out our new Seminar Series! See pages 28 and 29.
IN PATENT LAW
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The Worlds BEST Patent Law Courses
and a Spectacular Venue!
2 www.patentresources.com
atent Resources Group's Loyalty Program provides preferential pricing at our Advanced Courses
Programs and at our new Seminar Series. If you were a paid attendee at any PRG course in 2013 or
already in 2014, you are automatically a loyalty member for 2014 and will be entitled to special pricing
when you attend any courses at our 2014 Fall Advanced Courses Program or any of our 2014 Seminar Series!
And after being a paid attendee at any PRG course in 2014, youll automatically be eligible for Loyalty Program
benefits for the rest of 2014 and for 2015. If you didn't attend any PRG courses in 2013 or so far in 2014, your
2014 Loyalty Program benefits will kick in after your first 2014 course. So, if you sign up for multiple courses
at the Fall 2014 Advanced Courses program, you'll pay full price for the first course and get Loyalty Program
member pricing for the other courses. Register today and be part of the PRG Loyalty Program!
About PRGs Loyalty Program
PRGs 2014 Annual Fall Program
P
in Patent Law
For over 45 years, Patent Resources Group has been the nations leading educator of patent
professionals, providing attorneys, agents, engineers, and scientists from around the world with
comprehensive courses and publications that set the industry standard for patent education.
WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN LAS VEGAS IN FALL 2014?
BECAUSE PRGS ADVANCED COURSES PROVIDE AN EDUCATIONAL OPPORTUNITY THAT
YOU SIMPLY CAN'T GET AT ANY OTHER SINGLE PROGRAM. OUR COURSES:
Will arm you to deal with the complexities of the America Invents Act the final changes
resulting from the America Invents Act (AIA) took effect in March 2013. However, the effects of this
landmark legislation will be impacting all aspects of patent practice for years to come. Our Fall 2014
Program features a significantly revised and expanded one-day course on the AIA that focuses on
understanding its implications going forward. In addition, all of our returning courses have been updated
as needed to reflect the ongoing impacts of the AIA.
Provide an amazing value if you register for your Fall Program courses by July 28, 2014,
you'll pay the same tuition rates that weve been charging since 2005! And if you come to our programs
every year, youll continue to benefit from our special Loyalty Program discounts for our Advanced Courses
and our Seminar Series (see below).
Go beyond the basics, showing how to apply the law to real-world intellectual property issues and to
make calculated legal and business decisions.
Give you practical insights that you can apply immediately when you
get back to the office.
Offer the CLE credits you need.
Are an investment in your practice or your company, increasing
both your ability to successfully prosecute patent law and the value you bring
to your employer.
Provide an unparalleled opportunity for networking and exchanging
ideas with our faculty and your fellow attendees.
Register soon spaces will fill quickly!
PRG THE CHOICE OF EVERY GENERATION OF PATENT ATTORNEYS SINCE 1969.
www.patentresources.com 3
SEPTEMBER 27 - OCTOBER 2, 2014
Please note that the faculty members listed for each course are subject to change prior to the actual course date.
Register by July 28, 2014
for Lowest Fall Tuition!
Three-Day Courses: September 30 - October 2, 2014 (Tues-Thurs)
Art & Science of Patent Searching Patentability, Validity
& Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 4
Faculty: Brian Thurmond and Jonathan Skovholt
Comprehensive PCT Practice: How to Master Its Challenges . . . . . . . . . . . . . . . . . . . . . . 8
Faculty: Carol Bidwell and T. David Reed
Drafting Patent License Agreements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
Faculty: Brian Kacedon, William Pratt, Casey Dwyer, and Robert Shaffer
Federal Circuit Law (2012-2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
Faculty: Pete Peterson, Jon Hokanson, Sharon Israel, and Kara Stoll
Three-Day Courses: September 27-29, 2014 (Sat-Mon)
Chemical Patent Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Faculty: Tom Irving, Jill MacAlpine, Deborah Herzfeld, Kathryn Sanchez, and Rona Nardone
Crafting and Drafting Winning Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris
Designing Around Valid U.S. Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
Faculty: Patrick Burns, John Pinkerton, and Patricia Prior
Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman
Post-Grant Patent Practice: Review and Reexamination . . . . . . . . . . . . . . . . . . . . . . . . . 22
Faculty: Kevin Laurence and Matthew Phillips
Software Patents: Procuring and Enforcing After Alice GUPDATED! . . . . . . . . . . . 24
Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan
10 advanced patent law courses
are available for the 2014 Annual
Fall Advanced Courses Program.
Tuition for each Fall three-day
course is $2,195 through
July 28, 2014 and $2,295 after
that date.
Combined tuition for the Fall Patent
Searching Course and Workshop is
$2,590 through July 28, 2014 and
$2,690 after that date.
Don't finalize your Fall Advanced
Courses registration without
checking out our 4 one-day
Seminars being offered on
September 29 and 30. See page
27 to register and pages 28 and 29
for details.
Projected State Bar CLE Credit:
Las Vegas, NV
September 30-October 2, 2014 (Tues-Thurs)
Caesars Palace
8:15 a.m. - 11:30 a.m. and
1:30 pm. - 4:45 p.m. (Tues-Wed)
8:15 a.m. - 11:30 a.m. (Thurs)
Optional Workshop
1:30 p.m. - 4:45 p.m. (Thurs)
Registration deadline: August 26, 2014
(Register by July 28 for best tuition rates!)
Comments from previous attendees:
Well structured course. Good pace. Very useful
tips and information. High relevance to my
specific organization.
I'm entirely new to this field. It was general enough,
but detailed enough, for a beginner like myself.
Highly competent instructors.
The curriculum and text were designed and
written by twelve practitioners: eight
experienced patent information specialists and
four former examiners with expertise in both
English and foreign language searching. The
curriculum reflects the combined expertise of
Landon IP, which is one of only three
companies selected by the USPTO to conduct
patent searches on its behalf with a view to
reducing USPTO examiners towering
examination backlog.
Upon completion of the course, the
attendee will have learned:
How to approach a search in a systematic,
methodical and exhaustive way.
How to properly scope the search before
even beginning.
Art and Science of Patent
Searching Patentability,
Validity & Infringement
Course Description
his course comprehensively teaches how to conduct a professional patent search.
It provides direction for determining when a search is needed and what types and sources
of information should be searched in the process. Patent searching is both an art and a
science. Consequently, search capability improves with practice. But optimum practice requires a solid
foundation for those who seek to conduct searches accurately and efficiently. The course teaches
when, how, where and why to conduct a search and is appropriate for those who will conduct the
search or commission it.
Designed for patent attorneys and agents, inventors, paralegals and research managers, the course
and its materials will be understood by anyone from the inexperienced to advanced practitioners.
Unlike workshops that are taught by competing database providers, this global course is not tied to
a particular search engine, a database product or a patent information service. Instead, the instructors
teach skills that are applicable across databases, both proprietary and public, and without bias toward
the features of a particular search engine. Unique among its many features, the course provides a
comparison of the major patent search engines and teaches the strengths, weaknesses and benefits
of the database providers who provide them.
15.0 Hours
T
Course Faculty The faculty consists of patent searching and analysis leaders at Landon IP who have
expert search experience as attorneys, patent search instructors, and examiners with the U.S. Patent
and Trademark Office (USPTO).
LANDON IP, INC.
ALEXANDRIA, VIRGINIA
BRIAN THURMOND JONATHAN SKOVHOLT
... And Optional Patent Searching Workshop
Why Should You Take This Course?
The Patent Searching course presents
a systematic process for performing
prior art searches with greater efficiency
and precision. It is designed to benefit
a broad audience, including novice
searchers, seasoned patent
practitioners, and search professionals.
The course also provides unbiased,
detailed information concerning the
latest databases and tools of the trade.
Expert tips from search professionals are
provided to enable high-level patent
research through proper scoping,
structuring, and performance of the
search. Patent practitioners will
recognize that a robust understanding
of the prior art is a vital part of the
patent process, particularly in view of
accelerated examination demands and
the America Invents Act.
How to carefully search by classification, text

query progression, and citations, knowing
the benefits and pitfalls of each.
Both the major differences and subtle
nuances in conducting a patentability,
validity or infringement patent search.
Issues unique to searching within specific
technical disciplines.
Approaches to searching non-English-
language patents and published applications.
Approaches to searching non-patent
literature.
Approaches to reporting search results.
Differences between the major patent
search engines and important considerations
in selecting an appropriate search tool.
Ways to get high-level information from
patent search results.
The basics of several peripheral topics
including the use of the USPTO search
templates, searching for accelerated
examination, and searching using industry
standards.
Course materials
The text for the course is Art & Science of
Patent Searching Patentability, Validity &
Infringement, edited by Matthew Rodgers,
Long Nguyen and David Hunt. The
thoroughness of the text will minimize the
need for note-taking at the program.
Optional Patent
Searching Workshop
A patent search engine user account is
needed for the Workshop. Please contact PRG
if you need assistance in obtaining one.
This Workshop is an optional add-on to the
Art and Science of Patent Searching course and
gives attendees the opportunity to practice
hands-on patent searching alongside the
course instructors. Attendees must bring their
own laptops as well as their own search engine
user accounts so that they will be able to
practice using familiar search tools. Wireless
internet access will be provided during the
Workshop.
The faculty will work with the attendees to
answer questions and provide guidance as they
execute their searches in real time. The
Workshop is structured to test each attendees
retention of the concepts covered in the course
as they put their training to use in several
sample search projects. Attendees will be
provided with multiple sample disclosures,
encompassing a wide variety of technologies,
on which they will base their search. The
informal, lecture-free setting will allow each
attendee to work independently, but in close
proximity to an instructor.
The instructors will be able to provide
assistance with any of the major patent search
engines. The attendees will be guided through
scoping the search, performing the search and
analyzing their results. Answer keys will be
provided at the end of the Workshop so that
participants may gauge their progress and have
a reference to use for additional practice
following the class.
Requirements and Prerequisites:
Completion of the immediately preceding
2014 Art and Science of Patent Searching
course
Important: Wireless-enabled laptop
computer (Internet Explorer or Firefox web
browser, and Microsoft Office package
recommended)
Important: Patent search engine user
account (in an attempt to focus on course
concepts and high-level searching
techniques, publicly available search engines
cannot be solely relied upon for the lab
portion of this course)
Important: Unrestricted use of third-party
wireless connection (please verify with your
IT department that your security settings will
allow access to the wireless hub necessary
for the course). G
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(Including 2.0 Hours Legal Ethics)
Las Vegas, NV
September 27-29, 2014 (Sat-Mon)
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Mon)
For example, the rising tension within the
Federal Circuit panels on the role of the
specification in claim construction and the
increasing pressure to revisit the Cybor rule of
de novo review of claim construction on appeal
will bring important developments for
practitioners in the very near future on what to
expect for claim construction. For the
practitioner, the take-home message remains
to prosecute as if your life depended on literal
infringement and lay the groundwork in the
specification (the single best guide to the
meaning of a claim term) for a broad claim
construction. This course, presented by an
experienced faculty, each with a significant
depth of experience, suggests many practical
approaches with those objectives in mind.
We discuss how to establish patentability
Chemical
Patent Practice
Course Description
his up-to-the-minute course teaches the chemical patent practitioner how to use
fundamentally sound principles to prepare and prosecute a United States chemical patent
application in a conservative way and in view of all of the opportunities and pitfalls afforded
by the AIA,to enhance such possibilities as:
obtaining broad claim construction for literal infringement purposes, particularly by
avoiding "vile" language (i.e., lightning rods for noninfringement and 112, para. 2
invalidity) that is best described as patent profanity;
utilizing the doctrine of equivalents to the extent that the doctrine still exists;
surviving Festo;
destroying, not rebutting, a defective prima facie case of obviousness in our current post-
KSR world, including illustrations from several real U.S. patents prosecuted by a faculty
member;
obtaining the broadest possible claims by avoiding too many and unduly narrow limitations;
obtaining claims that will be directly and literally infringed by competitors rather than by
customers;
proving literal infringement of claims in litigation;
obtaining claims infringed by downstream infringers;
preparing and prosecuting the application to avoid inequitable conduct in view of the Federal
Circuit's en banc decision in Therasense and progeny thereof, and the impact of the AIA
supplemental examination procedure that went into effect September 16, 2012; and
understanding the implications of the various provisions and effective dates of the America
Invents Act (AIA), particularly as they relate to filing strategies in and around the March
16, 2013 date when the first inventor to file provisions took effect.
18.0 Hours
T
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
WASHINGTON, DC
DUPONT
WILMINGTON, DE
TEVA PHARMACEUTICALS
FRAZER, PA
TOM IRVING JILL MACALPINE DEBORAH HERZFELD KATHRYN SANCHEZ RONA NARDONE
Course Faculty
The faculty has decades of collective experience across the complete spectrum of chemical practice.
Are you well-versed on how
chemical claims are constructed and
construed? Well enough to avoid an
overly narrow, often disastrous claim
construction leading to a royalty-free
transfer of patented technology to
your competitor? Well enough not to
trip up on obviousness over KSR? If
youd like to answer these questions
with a resounding yes then you
should attend our highly-acclaimed,
comprehensive Chemical Patent
Practice course. Dont fail your clients
or yourself in these tough economic
times learn from the best.
and validity under 103 in the post-KSR world,
where knowledge and direction equate power.
Case studies, involving real U.S. patents, will
provide a framework for creative thinking on
the law of prima facie obviousness.
We will look closely at the guidelines for
best mode disclosure from a substantive and
ethical point of view, particularly in view of
changes made in the AIA. In addition, we
consider the Federal Circuit inequitable conduct
decisions in the context of the en banc
Therasense decision, including its progeny,
many of which will be reviewed for the lessons
they provide to both in-house and private
practice lawyers. In fact, the inequitable
conduct and best mode discussions provide the
two hours of ethics that is otherwise sometimes
hard to find, particularly on substantive topics
related to your practice. The ethics discussion
should take place during the last two hours on
the second day (as currently estimated). The last
day will include a discussion of a hypothetical
chemical patent problem that synthesizes and
reinforces the teachings of the class.
The enactment of the AIA did not wipe the
patent law slate clean. Because of the way the
AIA was written, the old law will be relevant
to practitioners until at least March 16, 2034!
Thats right practitioners will have to be
experts in both old and new laws for at least
another 22 years! The Chemical Patent
Practice faculty has lectured on the new law
extensively and has studied it intensively in
conjunction with people who were
instrumental in the drafting of the legislation.
The faculty will bring all of that background to
their presentations to you.
And do not be misled into thinking that this
course is applicable only to patent prosecutors.
The principles taught will greatly help those
involved with prelitigations, litigations, Orange
Book listings, due diligences and analysis of
third-party patents for validity, infringement,
and enforceability issues.
This is one of the best courses that I have ever
taken. All of the instructors are excellent and
provide very helpful practical tips regarding
chemical patent practice. The material provided
is excellent and a very good reference guide.
Mark Cohen
Scully, Scott, Murphy & Presser PC
October 2009 attendee
Good overview and reminders of good practice
points. Great consolidation of information and
tips based on recent case law. Very current.
Heather Gorman
Thomas, Kayden, Horstemeyer & Risley, LLP
April 2010 attendee
Course Materials
The definitive treatise, Chemical Patent Law,
written and continually updated by the
Finnegan, Henderson, Farabow, Garrett &
Dunner faculty, with the invaluable assistance
of editor Stacy D. Lewis, will be provided to
attendees at the course. This treatise covers
virtually every situation that can arise in the
preparation and prosecution of a chemical
patent application. It will remain on your desk
and in continual use long after the course.
The treatise underwent a complete overhaul
in the aftermath of the enactment of the AIA
to provide completely updated materials to the
course attendees. Although the treatise is of
great value, the faculty members have found
that the best vehicle for teaching is the use of
slides, which will be provided in book form to
attendees on the first day of class. The slides
book will contain ample room for note-taking
and cross-referencing and, as such, will be a
valuable addition to your daily kit of chemical
patent practice tools. G
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Las Vegas, NV
Caesars Palace
8:15 a.m. - 11:30 a.m. and
1:30 pm. - 4:45 p.m. (Tues-Wed)
8:15 a.m. - 11:30 a.m. (Thurs)
The PCT allows applicants to secure a filing
date in all PCT Contracting States by filing a
single application in their home country and in
their home language. The PCT provides a
comprehensive search of the prior art and a
preliminary, nonbinding written opinion on the
novelty, inventive step (non-obviousness) and
industrial applicability (utility) of the claimed
invention. In addition, applicant has an
additional 18 months beyond the end of the
Paris Convention priority year to make final
decisions on where to seek patent protection.
The delay in the associated expenses of
national filings alone make the PCT a cost-
effective procedure and can result in a
significant cost saving by helping to avoid
unnecessary filings and/or allowing filings in
countries where commercial importance has
grown between international filing and
national phase entry.
By filing an international application, all PCT
Contracting States and four regional offices are
automatically designated and are available for
national phase entry later in the process.
Whether the international application is the
first filing or it claims priority to an earlier filing,
the applicant does not have to make the final
decision on where to seek patent protection
until 30 months from the earliest priority date.
The final decisions are based on the
information obtained in the international
search report and the international preliminary
report on patentability as well as information
obtained by the applicant regarding the
scientific status and commercial value of the
invention. In short, through using the PCT, the
applicant will have a much better idea of the
likelihood of obtaining commercially
meaningful patent protection for the claimed
invention. In addition, the applicant will have
the opportunity to obtain additional search
results through the supplementary search
option as well as have the opportunity to
advance prosecution by using the optional
international preliminary examination
procedure. Applicant can amend the
application and/or provide arguments for
Comprehensive PCT Practice:
How to Master Its Challenges
Course Description
ince coming into force in 1978, the Patent Cooperation Treaty (PCT) has established itself
as a valuable way for applicants to obtain patent protection in many countries around
the world. The number of PCT Contracting States is currently 146 and growing. PCT
members include the vast majority of industrialized, developing and emerging countries of the
world. The Comprehensive PCT course guides the attendees chronologically through the
international phase of the PCT and into the national phase before the national and regional
patent Offices of interest. The instructors present strategies for effective use of the PCT, the
benefits obtained and options available when using the PCT. In addition, the course covers the
numerous safeguards available for applicants, including the restoration of priority rights and
incorporation by reference.
15.0 Hours
S
Course Faculty The two faculty members have extensive government and corporate experience in all
aspects of PCT matters.
CONSULTANT ON PCT MATTERS FOR THE WORLD
INTELLECTUAL PROPERTY ORGANIZATION; FORMER SUPERVISOR
OF THE USPTO OFFICE OF PCT LEGAL ADMINISTRATION
CAROL BIDWELL T. DAVID REED
CONSULTANT ON INTERNATIONAL PATENT PRACTICE SPECIALIZING IN PCT;
FORMER SENIOR PATENT ADVISOR, GLOBAL PATENT SERVICES, THE PROCTER
& GAMBLE COMPANY, CINCINNATI, OHIO
Attendees will learn the benefits and
advantages of the Patent Cooperation
Treaty (PCT) procedure as well as the
numerous options and safeguards
available for applications filed under
the PCT. The Comprehensive PCT
course enumerates procedures and
strategies designed to obtain patent
protection for inventions in multiple
countries through the filing of a single
international application under the
Patent Cooperation Treaty. While a
basic working knowledge of the PCT is
useful when taking this course, it will
prove valuable to both new and
experienced users of the PCT.
consideration by the examiner prior to the

issuance of the international preliminary report
on patentability (Chapter II of the PCT).
Depending on the International Search and
Preliminary Examining Authorities selected by
the applicant, certain national and regional
patent Offices (including the US) allow a
favorable PCT work product (for example,
international preliminary report on
patentability) to be applicants ticket to
accelerated examination on their patent
prosecution highway.
This Comprehensive PCT course discusses: a)
when the use of the PCT is advantageous and
when it is not; b) the effects on patent term
based on the first (priority) application; c)
selection of international authorities under the
PCT for greatest advantage; d) the information
received by applicants during the PCT process;
e) entering the national phase; f) upcoming
changes in the PCT; g) use of PCT search and
examination results to utilize the Patent
Prosecution Highway; h) the effect of the
America Invents Act (AIA) on practice under
the PCT; plus a host of other PCT-related topics.
In addition, the course presents the growing
information available from the WIPO Internet
site via the PATENTSCOPE
search tool. The

Comprehensive PCT course includes a detailed
look at patent-related provisions of the Paris
Convention.
Comments from attendees of past PCT courses:
Excellent instructors - thorough coverage of
subject.
The course materials are excellent. The lecturers
have much experience in PCT-related activities and
have the ability to explain that to a class.
Outstanding speakers with practical experience.
Course Materials
A comprehensive text is used in the course
presentation that includes detailed explanations
of the various topics and sample forms. G
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(Including 1.0 Hour Legal Ethics)
Las Vegas, NV
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
Practical advice for drafting enforceable patent
claims, sprinkled with supporting legal
authority.
Spanning the gap between current Federal Circuit
law and actual, practical tips on how to incorporate
the latest law into successful prosecution practices.
Good coverage of current law and potential
pitfalls associated with certain practices (I'm
planning to make changes to my practice with
regard to various pitfalls you have pointed out).
Answer to the Conundrum.
There is a sound basis for dealing with the
dilemma generated by the Federal Circuit! A
practical ex parte practice path is now in being
that navigates through the chaos. Its road sign
reads LP-CD (Low Profile, Common
Denominator Practice). LP-CD, despite the
chaos it penetrates and traverses, is charted
clearly and boldly in this PRG course. Crafting
& Drafting Winning Patents was designed and
created by PRGs Professors Paul Gardner and
Irving Kayton and enriched by the PRG course
faculty.
Crafting & Drafting
Winning Patents
Course Description
his Crafting & Drafting course marches to a special drummer and focuses on the end result
producing a winning patent that will be held literally infringed and not invalid under
(sec)112(a), f/k/a/ (sec)112, para.1, despite the time pressure created by moving to a first-
inventor-to-file system under the America Invents Act (AIA).
The Conundrum. Chaos now reigns supreme in Federal Circuit case law (and the judiciary of the U.S.
district courts have begun to say so openly). For example, the importation of claim limitations from
the specification into the claims albeit under the rubric of claim interpretation is now rampant,
rendering many patents virtually worthless. A case in point is C.R. Bard, Inc. v. United States Surgical
Corp., where the court imported the limitation pleated into a broad claim reciting a surgical mesh
plug used for hernia repair, relying heavily in doing so on the Summary of the Invention that
described a plug having pleats. The court repeatedly referenced the Summary of the Invention
throughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patent did
recite a pleated plug, without even mentioning, let alone reconciling, the immutable doctrine of
claim differentiation that should have sustained the broad claims.
Claim interpretation is only one chaos region. There are others where the Federal Circuit case law is
equally inconsistent, including the law concerning the written description requirement, means-plus-
function clauses, the doctrine of equivalents, and prosecution history estoppel.
This creates an immense dilemma for conscientious patent practitioners trying to write and prosecute
patent applications that will provide their clients with the patent protection they deserve. Which cases
should be relied on, and which should be ignored?
15.0 Hours
T
Course Faculty
Collectively, over 75+ years of experience litigating, prosecuting and teaching about patents.
DLA PIPER US LLP
RESTON, VA
KENYON & KENYON
NEWYORK, NY
JOHN TSAVARIS DALE LAZAR
Learn the areas of chaos in Federal
Circuit jurisprudence of primary
concern to practitioners who prepare
and prosecute patents. The course will
focus on a series of cases where the
patent owner lost, not because of
what the litigators did, but because of
how the patent practitioner drafted
and prosecuted the application.
Compounding the problem is the time
pressure created by moving to a first-
inventor-to-file system under the
America Invents Act (AIA) and the
anticipated increase in the filings of
provisional applications with their
many traps for the unwary. The course
will teach you how to write provisional
applications and draft and prosecute
non-provisional patent applications to
avoid these pitfalls.
DINSMORE & SHOHL LLP,
DAYTON, OH
PAUL ULRICH
This course distills everything from the law
(and dicta) of the Federal Circuit and its
predecessor courts that has a material bearing
now, today, and in the foreseeable future, on
how we must successfully:
1. Prepare for drafting the application;
2. Design what must be included in, and
excluded from, the provisional application
and the nonprovisional application
specification and drawings and, very
importantly, in what form and format it
should be included;
3. Engage in claim drafting strategy designed
to result in literal infringement, recognizing
that this strategy must be taken into
account as a principal factor in the earlier
design of the specification;
4. Develop a protocol and a philosophy for
prosecuting the application that advance
and do not defeat the efforts in (1) through
(3); and
5. Balance the accomplishments of (1)
through (4) against, first, increased costs of
crafting and drafting that sometimes
accrue and, second, their effect on the
length of the patent term that will result,
and third, the time pressure created by
moving to a first-inventor-to-file system
under the AIA.
Crafting & Drafting is not a survey course
covering the broad landscape of patent
prosecution or a workshop. Instead the course
drills deeply into the six specific areas of Federal
Circuit chaos that have most seriously and
frequently destroyed the value of patents. We
will focus on what we can do as patent
prosecutors to prepare and prosecute
applications that are immune from the chaos.
Crafting & Drafting will almost certainly
effect a change in your patent law life, because
the Federal Circuit has effectively (albeit
unwittingly) dictated that it be so.
It is noteworthy that many hundreds of
patents have already issued using the Crafting
& Drafting techniques set forth in this course
(several of which will be reviewed), with
beneficial effect in license and litigation
negotiations.
Legal ethics issues including the recent
Therasense decision and its profound changes
to the law of inequitable conduct and duty of
disclosure will be covered from 9:15-10:15
a.m. on the last day of the course, as currently
estimated.
Who Should Take This Course?
This course is for patent practitioners with a
minimum of two years of practice, and
preferably more. It is sufficiently sophisticated
for even the most experienced. The faculty
knows this to be true because the problems
and solutions about which they conferred and
debated in bringing this course to fruition
plumbed the depths of their combined patent
law knowledge, experience and ongoing
research and scholarship.
Beginning patent practitioners should look
forward to PRGs four-day Workshop designed
specifically for them, The Winning Patents
Workshop. For details visit our website at
www.patentresources.com.
Course Materials
A comprehensive, one-volume course text,
entitled Crafting & Drafting Winning Patents,
and a bound set of lecture slides, are definitive
on the subject and will be given to registrants
at the course. The Textbook and slides are
constantly updated and revised to include
recent decisions and changes in the law
including the applicable provisions of the AIA.
G
he beautiful statues, pillars, and paintings
in the Augustus Tower lobby set the tone
for your entire experience.
T
The Designing Around course distills
the patent infringement analysis into
comprehensive yet concise step-by-
step checklists that can be used by
attorneys at all experience levels to
assist their clients to develop
competitive, noninfringing products.
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8:15 a.m. 11:30 a.m. (Mon)
Practical explanation of case law to apply to
patent drafting, infringement analysis and
opinion writing.
The substance was excellent. Presentations
gave good overviews and the course books give
encyclopedic detail for topics of interest.
Well organized, very thorough, presenters all
know their stuff.
Four cookbooks covering (1) literal
infringement, (2) infringement under the
doctrine of equivalents, (3) infringement of
means plus function claim elements, and (4)
prosecution history estoppel, are provided.
Using and following these cookbooks, which
distill opinions by the Federal Circuit and the
Supreme Court in cases from Pennwalt to Festo
IX, any patent practitioner can counsel his or
her client on how to design around the
patented invention with almost certain
impunity a design that appropriates the
patented invention and that, prior to Pennwalt
and its progeny, would have been held an
infringement rather than the socially desirable
activity of designing around.
This course will show practitioners
representing potential infringers how to
counsel competitive product design under the
guidance of Federal Circuit and Supreme Court
cases, which will almost always be viewed as
effective designing around. How to conduct
litigation to achieve a happy ending for your
infringement-accused client will be set forth in
elegant simplicity.
Actual Demonstrations
To ensure no confusion on anyones part in
this exercise, the faculty and students will go
through several claim construction exercises
and compare their conclusions with the Federal
Circuits claim construction in actual cases. A
mock design around exercise will also be
presented. The demonstration considers client,
marketing and engineering perspectives, in
addition to legal analysis. To prepare for the
Designing Around
Valid U.S. Patents
Course Description
n Markman and Cybor, the Federal Circuit required district courts to construe claims as a
matter of law and decided to review claim construction de novo. The object was to make
claim construction predictable, so that claims would better perform their public notice
function. The result has been an unmitigated disaster, often (but not always) reading limitations
into the claims that the examiner did not require to establish patentability over the art of record.
In fact, the court has often overridden the examination process, undermining the public notice
function of claims ab initio. This course will explore the current condition of claim construction in
detail and explain how competitors can use it to their advantage, even when the claims on their
face are literally infringed.
15.0 Hours
I
Course Faculty PRG has offered Designing Around Valid U.S. Patents for over 15 years, and it remains
one of our most popular courses.
PATRICK BURNS
GREER, BURNS
& CRAIN, LTD.
CHICAGO, ILLINOIS
JOHN PINKERTON
THOMPSON & KNIGHT
DALLAS, TEXAS
PATRICIA PRIOR
GREER BURNS & CRAIN LTD.
CHICAGO, IL
exercises and demonstration, the course faculty
will illustrate the accused structures relative to
the claims in the landmark, no-infringement-
by-claim construction cases of Alloc and
Nystrom, the no-infringement-by-equivalents
cases of Slimfold, Laitramand London, and the
super landmark, no-equivalents-at-all after-
prosecution-history-estoppel case of Festo IX.
These and other cases are presented in literal,
graphic clarity.
How to Draft Infringement
and Noninfringement Opinions
The effects of Seagate, the AIA, and Bard on
findings of willfulness, enhanced damages,
and fee awards will be discussed in detail. The
faculty also explains the substance and form
opinions should have to maximize their
effectiveness in litigation.
Course Materials
The two-volume text for Designing
Around Valid U.S. Patents is authored by the
distinguished course faculty, each of whom has
extensive successful litigation, prosecution and
counseling experience. Nothing like these
unique books exists anywhere else. G
he Gordon Ramsay Pub & Grill
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Las Vegas, NV
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Tues-Wed)
8:15 a.m. 11:30 a.m. (Thurs)
This course provided a great overview of
licensing issues and anecdotal scenarios giving
rise to said issues.
Andrew Weber
Honigman Miller Schwartz and Cohn LLP
April 2012 attendee
I have been drafting license agreements for the
Federal government for 6 years, and this course
helped tie together everything I've learned in
this time.
Suzanne Seavello Shope
Centers for Disease Control & Prevention
April 2010 attendee
The information is very practical and relevant
to the 'real world' problems encountered in
drafting and reviewing agreements.
Glenn Smith
Bausch & Lomb,
This is a course for the craftsman. Both the
course and the text provide a solid basis for
responding to virtually every license drafting
problem that may arise. Even for the highly
experienced licensing lawyer, new insights may
be provided; at the very least, the course will
be a rich, comprehensive refresher. For the less
experienced licensing lawyer, it will open vistas,
both with respect to hidden problems and to
mechanisms for dealing with them.
Drafting Patent
License Agreements
Course Description
his course and its text provide concrete drafting and negotiating advice with precise references
to existing law.
The course lays the groundwork for a clause-by-clause examination of all significant elements
of the patent licensing agreement. The practical questions always focused on are how and whether
each element is sufficient to serve the business needs of the parties while remaining legally viable.
The main components of typical licensing agreements, from the opening part through the execution
and authentication provisions, are examined in detail. Practical, hypothetical illustrative examples are
used, often in workshop form, with carefully crafted problem handouts distributed to the attendees
during the course.
Throughout the course, the faculty members emphasize achieving legally satisfactory drafting results
by recognizing the logical principles that underlie the job to be done. Sample forms are used to
explain the practical considerations upon which they are based. Law and precedent are presented in
terms that make clear the legal reasoning behind recommended drafting approaches.
15.0 Hours
T
Course Faculty The faculty teaches by sharing decades of combined experience in licensing.
WASHINGTON, DC
D. BRIAN KACEDON WILLIAM PRATT CASEY DWYER ROBERT SHAFFER
Licensing is a key strategy by which
companies realize significant value
from their patents and technology. The
ability to draft, negotiate and interpret
license agreements is a core skill for IP
attorneys and other professionals who
deal with licenses. This course provides
a comprehensive overview of key
licensing concepts, the drafting of key
clauses in a license agreement, and the
impact of related topics such as
competition law, export control law
and the Bayh-Dole Act. It is taught by
experienced license professionals with
an emphasis on practical considerations
and provides valuable insights and
discussion for both novices and more
advanced practitioners.
Legal ethics in license negotiations will be
presented during the afternoon session on Day
2 and in misuse issues during the morning
session on Day 3, as currently estimated.
Course Materials
The text for the course is the Seventh Edition
of the classic, Drafting Patent License
Agreements (BNA), by Brian G. Brunsvold, D.
Patrick OReilley and D. Brian Kacedon. The
thoroughness of the text and accompanying
slides will minimize the need for note-taking at
the program. Moreover, this Seventh Edition
includes a computer disk, which has a set of
form paragraphs that can be incorporated,
with careful editing, into a license agreement
to be prepared by the course attendee.
The hardcopy edition of the course text will
be given to each attendee at the program. The
volume containing the printed slides that will
be used throughout the lectures will also be
provided at the course; this volume will include
extensive license drafting workshop materials
and Justice Department licensing guidelines.
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he Forum Shops at Caesars are Las Vegas' premier retail, dining
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T
Las Vegas, NV
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Tues-Wed)
8:15 a.m. 11:30 a.m. (Thurs)
Federal Circuit Law
(2012-2014)
America Invents Act (AIA)
The AIA is generally regarded as the most significant change to the U.S. patent system since 1952.
For years to come, however, practitioners will have to practice under parallel systems the old
law and the new law. The lecturers will explain, as appropriate, how the results in particular
cases may be affected by the AIA.
Course Description - Two Years in Review - Taught by Experienced Lecturers, All Former Technical
Advisers/Law Clerks
his is one of PRGs longest continuously offered courses. Because the course focuses on
the last two years, attendees often repeat this course every two years to remain current.
Consequently, this course offers practitioners a unique opportunity to both become current
in the law, and to remain so. And to do so in an interactive environment that is both informative
and intellectually challenging. The interactive environment (as described below) allows attendees
to contribute to the learning experience, and avoid sitting through a series of dull lectures.
There was a time when patent law was considered sufficiently settled such that slip opinions
could be allowed to accumulate in a stack until an opportunity or need for review arose. Those
days are gone. Now that stack for many has become a large electronic file and has likely grown
beyond the point of realistically being able to catch-up with the opinions. If this applies to you,
then you are a prime candidate for this course.
15.0 Hours
T
Course Faculty
The one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the courts history, provide
matchless inside perspective and candid, unequaled insight to Federal Circuit law past, present and
future. This now becomes particularly unique given the America Invents Act of 2011 (AIA), and the lecturers
commentary on whether and how the AIA may affect Federal Circuit law.
PETE PETERSON
COX SMITH
SAN ANTONIO, TX
(FORMER TECHNICAL
ADVISOR TO THE LATE CHIEF
JUDGE MARKEY)
SHARON ISRAEL
MAYER BROWN LLP
HOUSTON, TX
(FORMER LAW CLERK TO
CIRCUIT JUDGE LOURIE)
JON HOKANSON
LEWIS BRISBOIS BISGAARD &
SMITH LLP, LOS ANGELES, CA
(FORMER TECHNICAL
ADVISOR TO THE LATE
CIRCUIT JUDGE MILLER)
KARA STOLL
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
WASHINGTON, DC
(FORMER LAW CLERK TO CIRCUIT
JUDGE SCHALL)
Each week the Federal Circuit
publishes opinions that materially
clarify and sometimes alter
existing practice. One cannot
competently practice as a patent
attorney today, in prosecution,
litigation, counseling or licensing
without an understanding of the
Federal Circuits most recent opinions.
The distinguished faculty of Federal
Circuit Law (2012-2014) will expertly
guide you through two years of relevant
and up-to-the-minute cases in an
interactive lecture format that
encourages active attendee
participation. Moreover, lecturers will
discuss new cases in the context of prior
cases (many outside the two-year time
span), thus giving you not only current
law, but also a perspective on how the
law has changed.
INCLUDING COMMENTARY
on the America Invents Act
Every practitioner knows the importance, if
not the fundamental requirement, of staying
up-to-date on Federal Circuit and Supreme
Court law. But the Federal Circuit weekly
hands down opinions, frequently precedential
opinions in patent cases that, according to the
Federal Circuits Internal Operating Procedures
for precedential opinions (IOP # 10), add
something to the existing body of case law, as
opposed to simply resolving the parties
dispute. Thus, each precedential opinion was
considered, by definition, noteworthy enough
that the Federal Circuit elected to issue a
precedential opinion. Although some may
question that choice, failing to stay up-to-date
on at least precedential opinions, by definition,
results in flying blind in the face of
sometimes rapidly developing changes, many
times involving opinions creating new issues,
and new law, for litigators and prosecutors
alike. Whats more, even taking the time to
religiously read the opinions is frequently not
enough. The Federal Circuit unfortunately
often issues opinions that vary from established
precedent sometimes dramatically,
sometimes more subtly - and often without
even mentioning prior contrary authority. Or,
in which contrary authority is buried in
dissenting and concurring opinions. Such
opinions are highlighted in the course.
The Changing Face of the Federal Circuit
Of equal importance, the face of the
Federal Circuit has changed dramatically over
the past three years. The Federal Circuit is not
a monolith, but rather a collection today of
twelve active and six senior judges, each of
whom have individual judicial philosophies that
impact various patent law issues. The judicial
philosophy of those eighteen active and
senior judges is far from uniform. For example,
some of the judges favor limiting claim
construction to the invention that is the
subject of the written description, while
others focus more on the claim language.
Some judges take a narrow view of the
Supreme Courts recent decisions involving
patent eligibility under 101, while others take
a more expansive view. The list goes on.
As a result, actually understanding Federal
Circuit opinions today frequently involves
going beyond the printed words, and requires
examining the views of individual judges
participating in that opinion whether writing,
joining, concurring or dissenting. For example,
in CLS Bank Intl v. Alice Corp. Pty. Ltd. (2013),
although issued as an en banc opinion on
patent eligibility under 101, diverse opinions
totaling 135 pages were handed down on
several issues collectively only garnering
plurality (not majority) support on core issues
necessary to resolve the dispute. As a result,
although likely to be subject to Supreme Court
review, there was no single majority
precedential opinion. Strongly held individual
judicial philosophies foreshadow similar results
in the future on a variety of issues not limited
to 101.
New judges necessarily mean new judicial
philosophies, and possible refinements, if
not outright changes, in existing law. We are
already seeing some of that. Judge Wallach,
confirmed in 2011, emphasized in Plantronics,
Inc. v. Aliph, Inc. (2013) that in connection with
the secondary or objective factors under
103, we have required courts to consider
evidence of the objective indicia of
nonobviousness prior to making the ultimate
determination of whether an invention is
obvious. Judge Reyna, also confirmed in
2011, concurring in Apple, Inc. v. U.S. Intl
Trade Commn (2013), wrote that I emphasize
that objective evidence of nonobviousness,
such as that gleaned from the patented
products role in the marketplace, is the indicia
of the innovation principle upon which rests
our system of patents. Thus, these two new,
active judges have expressed judicial
philosophies that emphasize the importance of
secondary or objective evidence of non-
obviousness that, while correct, add elements
of timing and weight not seen recently.
Also, in important cases such as CLS Bank
Intl v. Alice Corp. Pty. Ltd., new judges
Taranto, Chen and Hughes did not participate,
and Judge Linn has assumed senior status.
Because of the close votes, those changes
could sway the Federal Circuit one way or the
other on fundamental issues involving 101.
Indeed, since 2010, when Chief Judge Rader
succeeded Chief Judge Michel, two active
judges have resigned, two active judges have
assumed senior status, two senior judges have
died, and six new active judges have been
confirmed three in 2013 alone. Thus, fully
one-half of the Federal Circuits complement of
twelve active judges has been replaced since
2010 a rare event by itself - and the judicial
philosophy of the most recent appointees is
just emerging. The changing face of the
Federal Circuit suggests even more significant
changes in the law in upcoming opinions.
Increased Supreme Court Review
The U.S. Supreme Court has, over the past
few years, granted certiorari in a record
number of IP cases. In its 2012 Term (2012-
2013) for example, the Supreme Court decided
six cases involving IP issues - Bowman v.
Monsanto Co. (patent exhaustion), Already,
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LLC v. Nike, Inc. (although a trademark case, it
involved covenants-not-to-sue in a context
analogous to patent law), Kirtsaeng v. John
Wiley & Sons, Inc. (international exhaustion
under copyright law - similar issue arises in
patent law), Gunn v. Minton (federal
jurisdiction of legal malpractice actions),
Association for Molecular Pathology v. Myriad
Genetics, Inc. (patent eligibility under 101),
and Federal Trade Commn v. Actavis, Inc.
(reverse settlement agreements).
In its current 2013 Term (2013-14), the
Supreme Court has already granted certiorari
in four cases, Medtronic, Inc. v. Boston
Scientific Corp. (burden of proof in declaratory
judgment actions involving a non-breaching
licensee), Octane Fitness, LLC v. ICON Health &
Fitness, Inc. (exceptional case standard),
Highmark Inc. v. Allcare Management Systems,
Inc. (deference to be accorded to district courts
exceptional case determination), and Petrella v.
Metro-Goldwyn-Mayer, Inc. (laches in
copyright cases - similar issue arises in patent
law). Pending petitions for certiorari suggest
that cert. may be granted in 2-3 additional
IP cases maybe more.
Although the primary focus of the course is
on Federal Circuit law, Supreme Court cases
(both decided cases and cases in which cert.
has been granted) are covered as well. Also,
cases such as Gunn are addressed in which
cert. was to the Texas Supreme Court, but
where the net effect of the Supreme Courts
decision overturned the Federal Circuits
decision and rationale in seven cases!
Filling In the Gaps
This course fills in the gap left by
traditional CLE programs and various
published case summaries, and is designed
to allow counsel to comprehensively become
and remain current on todays frequent and
rapid changes in the law. Unlike the one year
or less coverage typically offered by CLE
courses, this course covers a two-year span,
providing in-house and outside counsel alike
an opportunity to remain comprehensively
current on must be aware of cases by
attending biennially.
Also, unlike many CLE courses that offer a
patent law update in a one hour or so time
slot (which necessarily limits focus to but a few
of the 100+ decided cases), this course offers
a comprehensive review of precedential cases
(as well as select non-precedential cases), in
several formats of varying depth so that the
attendee can chose which format works best
namely comprehensive text, PowerPoint
slides, and lectures focused on new
developments:
(A) The course is scheduled over 2 days
time for in-depth review and analysis.
(B) Cases are reviewed in three volumes of
comprehensive text. (C) Case highlights are
addressed in printed PowerPoint slides which
attendees may follow and annotate during the
lectures. (D) Issues unique in each presented
case, and how those issues relate to prior law,
will be highlighted, plus the opinions will be
boiled down to various teaching points,
as well as to insights to the Federal Circuit that
are only available through the lens of a
former technical advisor/law clerk.
For example, the written text for cases that
primarily involve novelty and loss of right to a
patent under 102, and obviousness/non-
obviousness under 103, span 400+ pages of
review and analysis. Additionally, those cases
are further digested into PowerPoint slides that
an attendee may annotate during the
discussion of 102 and 103 cases. Thus, an
attendee may follow the discussion while
annotating the slides and refer to them later.
The same is true for the numerous other topics
listed in the course syllabus.
Also unlike most CLE courses, this program
is interactive. Questions from attendees (as
well as from the panel), and open discussion,
are actively encouraged in real time during
the lectures. If you disagree with (or agree
with) a point made by a lecturer, or wish to
raise a question or observation, you need only
raise your hand. The lecturer will stop and
recognize you and whatever
question/comment you have may spark further
debate which we encourage. Over the years
we have found that this interactive
environment is a signature feature of this
course. The issues we talk about are generally
worthy of debate we encourage the same.
Sampling of Cases Reviewed
There are a number of both controversial
and must know decisions that will be
addressed. This is just a sampling.
Practitioners writing applications for
computer-aided inventions should thoroughly
understand the implications of cases such as
Ergo Licensing v. CareFusion (2012), holding
claims calling for a programmable control
means invalid for failure to disclose a
corresponding algorithm although such
devices are off the shelf devices. And Noah
Systems v. Intuit (2012) holding claims invalid
because the disclosed algorithm did not
implement all claimed steps. But contrast cases
such as Power Integrations, Inc. v. Fairchild
Semiconductor International, Inc. (2013)
(circuit may recite sufficient structure to
avoid construction as a means-plus-function
limitation).
Litigation practitioners will be interested in
In re Bill of Lading (2012), setting out the
pleading requirements for direct, contributory
and induced infringement. But also
practitioners must consider K-Tech
Telecommunications, Inc. v. Time Warner
Cable, Inc. (2013) where the panel splits on
whether compliance with Form 18, FED. R. CIV.
P., is sufficient to support a civil action for
patent infringement.
In the area of inequitable conduct, a panel
majority in Network Signatures, Inc. v. State
Farm Mutual Automobile Ins. Co. (2013)
concluded that filing out a PTO form that
failure to pay a second maintenance fee was
unintentional without any further
supplementation did not constitute inequitable
conduct, but a strong, well-reasoned dissent
argued otherwise. On the other hand, the
opinion in Intellect Wireless, Inc. v. HTC Corp.
(2013) gives us the first clear instance of
adjudged inequitable conduct following
Therasense, and which involved a false Rule
132 affidavit. For those thinking that Rohm &
Haas Co. v. Crystal Chem. Co. (1983) was no
longer good law think again.
Case law decisions in the area of patent-
eligible subject matter under 101 have
particularly left practitioners without true
guidance. In In re Bilski, the Federal Circuit
attempted to clarify the test for determining
whether a claim recited patent-eligible subject
matter by holding that its machine or
transformation test was the sole and exclusive
inquiry. The Supreme Court promptly rejected
the machine or transformation test as the sole
test for patentable subject matter, but declined
to articulate a clear test thus leaving a vacuum
for the Federal Circuit to fill. The Supreme
Court also thoroughly rejected the Federal
Circuits view of 101 in Mayo Collaborative
Services v. Prometheus Labs. (S.Ct. 2012), but
the Federal Circuit responded in Myriad (2012)
in a 106-page collection of three opinions
continuing to advocate its splintered view of
101. The Supreme Court, on review in 2013,
largely rejected the rationale of the Federal
Circuit majority, but did little to clarify the
ambit of patent-eligible subject matter outside
the specific facts of that case.
Meanwhile, the Federal Circuit continues
with its view of patent eligibility under 101.
For example, a panel in CyberSource Corp. v.
Retail Decisions, Inc. (2011), questioned the
validity of Beauregard-type claims, but as a
panel opinion could not overturn Beauregard.
Does that signal the demise of such claims?
Opinions by some judges in CLS Bank v. Alice
Corp. (2012) en banc suggest that Beauregard-
type claims do not avoid the fundamental
analysis for patent eligibility under 101.
Claim construction remains controversial.
The Federal Circuit granted en banc review in
Lighting Ballast Control LLC v. Philips
Electronics North America Corp., and held oral
argument in 2013, on the question whether
the court should overrule Cybor Corp. v. FAS
Technologies, Inc. (1998), namely that claim
construction was a question of law for the
court. It seems likely that the court will issue
an opinion in early 2014. We must wait to see
whether, and to what extent, the court
fractures in addressing that question.
The court also continues to break new
ground in the interplay of reexamination and
district court infringement litigation. In a
surprise to many observers, the Federal Circuit
in Fresenius USA, Inc. v. Baxter (2013) held that
the PTOs cancellation of claims in
reexamination moots a pending infringement
action on those claims. As a result, the district
courts final, multi-million dollar judgment
was reversed because it was not final
enough. With the recent denial of en banc
review, and Circuit Judge OMalleys strong
dissent urging a circuit conflict with
Qualcomm, Inc. v. FCC (D.C. Cir. 1999), this is
a must know highly controversial case, with
or without Supreme Court review, affecting
counsels choice to seek reexamination.
Continuing in its run of surprises, the Federal
Circuit held that a license defense can be
effective for broadened reissue claims not in
existence at the time of the original license
agreement. In Intel Corp. v. Negotiated Data
Solutions, Inc. (2012) the Federal Circuit
affirmed the district courts summary judgment
of license and non-infringement defenses in
favor of Intel pursuant to a licensing agreement
with N-Datas predecessor in interest, National
Semiconductor Corp.
In an unusual generic v. generic case,
Momenta Pharms., Inc. v. Amphastar Pharms.,
Inc. (2012) the Federal Circuit vacated a
preliminary injunction against Amphastar and
in doing so appeared to broaden the scope of
the safe harbor provision of the Hatch-
Waxman Act in an unusual way that prompted
an explosive dissent by Chief Judge Rader.
In other areas, the Federal Circuit has
quashed long-standing abuses. In Uniloc USA,
Inc. v. Microsoft Corp. (2011), for example, the
Federal Circuit held, in the area of damages,
that as a matter of Federal Circuit law that the
25% rule of thumb was a fundamentally
flawed tool for determining a baseline royalty
rate in a hypothetical negotiation. The 25%
rule, used for more than a decade, has thus
been relegated to the scrap heap. Continuing
the trend of reining in large damage awards,
in LaserDynamics v. Quanta Computer (2012),
the Federal Circuit further narrowed the entire
market value rule almost to oblivion.
Those are but highlights. Federal Circuit
and related Supreme Court opinions in the past
two years have created law that practitioners
must know especially in light of the changing
composition of the court.
Smoothing the Troubled Waters?
In many respects, this is a user-designed
dynamic course because we collected and
analyzed course evaluations to determine the
topics and emphasis users desire. For the many
that have attended this course punctually every
two years, the curriculum, in response to user
input, retains the topics you have come to
expect, but has been expanded to include
separate chapters and lectures on Federal
Circuit en banc cases and Supreme Court
cases, selected important cases that do not
conveniently fit within a single topic
(crossover cases) as well as noteworthy
practice & procedure cases, noteworthy
appellate practice cases, joint infringement,
legal ethics within the context of recent
inequitable conduct cases, and selected Hatch-
Waxman cases, among others and now
including the AIA.
All of the above represents just some of the
continually breaking judicial news from the
Federal Circuit and Supreme Court that will be
covered. As attested by hundreds of past
course attendees, the faculty presents just the
right amount of factual and legal detail for
mastering each case discussed.
Course Materials
The full substance of the course is captured
in the Federal Circuit Patent Law three-volume
text, which extends over 1,500 pages,
supplemented by PowerPoint slides that digest
individual cases and court trends on specific
topics. G
Thorough review of each topic and each CAFC
decision. Good discussions among speakers and
attendees. Very knowledgeable speakers.
Fred Burkhart
Gardner, Linn, Burkhart & Flory, LLP
I've been attending this course, periodically,
over a number of years, and it continues to get
better & better.
Steven Fontana
Fontana International
he 11,200 square foot Nobu restaurant
and lounge offers teppanyaki tables, a
sushi bar, a 327-seat lounge and bar, and
a private dining area.
T
Las Vegas, NV
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
This is a very comprehensive due diligence
course. The speakers are very knowledgeable
and continually supplement the course
curriculum with real-world war stories. The
course materials are invaluable and include a
great overview of AIA.
Anthony Colesanti
C.R. Bard, Inc.
April 2013/April 2008 attendeee
The course is up-to-date with current case law.
It used a 'real world' example, and the speakers
are dynamic and interested in both the subject
matter and in teaching.
Julie Henrich
Plextronics
[I liked] the fluency and knowledge of the
lecturers on the subject. The content and the
lecturers are excellent. Im sure this course can
help both patent and non-patent attorneys.
April 2011 attendee
During the course, you will interact with
instructors and other students while exploring
case-study examples and lecture topics on a
wide range of issues:
common legal-interest agreements
claim construction
freedom to operate
validity assessments
inequitable conduct
patent eligibility, and
ownership/transferability.
The lively and entertaining presentation
covers every phase of a due diligence
investigation. Beginning with the initial
involvement of patent counsel, the panel
navigates a course through early information-
gathering, drawing in the attendees as part of
the due diligence team to spot critical patent
issues that can make or break a deal. The panel
also shares effective strategic approaches to
focus investigations and requests for further
information during the plunge into the data
Patent Due Diligence
in the AIA Era
Course Description
his course will provide practical guidance for conducting patent due diligence investigations
in todays changing legal environment. The panel will explore how the America Invents Act
(AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect the
due diligence process, while sharing practical techniques and strategies for conducting complete
investigations. These tactics apply to both large and small transactions, irrespective of the nature
of the specific transaction or the party you might be representing. Now, more than ever, companies
contemplating commercial transactionsbe they licensing, corporate mergers, acquisitions, or
private equity dealsneed to rely on due diligence counsel to provide a thorough understanding
of the value and risks associated with the transfer of intangible assets.
15.0 Hours
T
Course Faculty
The faculty, considered collectively, have participated in over 100 due diligence evaluations and will take
you through the process soup to nuts, whether you are representing the target or the acquirer.
WASHINGTON, DC AND RESTON, VA
ANTHONY GUTOWSKI ANDREW HOLTMAN BRYAN DINER
As todays tight economy continues
to challenge the business of clients,
pressure mounts for the patent
practitioner to help clients enjoy a
higher return on investment in deals
involving both acquisitions and
licensing-in of patent rights. By the
same token, those who represent
target companies need to learn the IP
strategies that help maximize income
from either takeovers or licensing-outs.
Attendees consistently grade the
Due Diligence course and its faculty
with some of the highest ratings of any
course that PRG offers. This critically
acclaimed course will help you raise
your game to new levels, whether you
are representing suitors or targets.
Sign up now for this 2 day
course. Sure, youll miss some time out
of the office. But your return on
investment will be a finely honed
ability to help clients see an increase in
their returns on investment.
room and to facilitate making recommendations
to the client that may ultimately affect the price
and structure of the deal.
On Day 1, from approximately 2:30 to 4:45
p.m., as currently estimated, we will discuss
potential ethical issues and inequitable conduct
hazards that may arise during an IP due
diligence investigation.
The concluding sessions of the course cover
risk-management issues that provide invaluable,
practical suggestions for contractual
considerations, including effective uses of
representations and warranties. Topics discussed
in the course apply both to investigating a
targets patent portfolio and to preparing a
portfolio for suitors.
Youll receive a thorough course book, chock
full of notes, examples, and case law.
The facultypartners at Finneganare all
patent attorneys with extensive experience in
due diligence investigations. The panel has
many years of experience in IP practice and
expertise in several different areas of technology.
Throughout the course, the faculty shares
interesting war stories, observations, and
practical tips for conducting the investigation in
a comprehensive and efficient manner.
In short, the knowledge youll gain from this
course will enable you to avoid due diligence
pitfalls, while more effectively assessing and
managing risks endemic in business transactions
involving complex IP rights and issues. G
ituated in front of the Neptune Bar, the 5,000-square
foot Neptune Pool offers the perfect place to relax. S
Las Vegas, NV
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
This course provides a practical framework for
using post-grant tools from both the perspective
of the owner and challenger, and insight on how
they work together.
Matt Rabdau
IP Counsel, Fluke Corporation
The materials are outstanding. I will use as
reference materials in the future. Lecturers
were wide open to questions and very responsive.
Interspersing of war stories and examples kept
the presentation interesting.
Charles Burpee
Warner Norcross & Judd LLP
Ten years ago courts were essentially the sole
arbiters of patent validity. About 5-6 years ago,
reexamination suddenly emerged as a popular
means for challenging patents, either alone or
alongside court battles. The reasons for that
shift were simple: Would you rather bring your
validity attack before an experienced patent
examiner with technical expertise in the PTOs
Central Reexamination Unit where claims are
given their broadest reasonable interpretation
and do not enjoy a presumption of validity, or a
jury in the Eastern District of Texas? The answer
becomes all the more obvious when one
considers that a reexamination can cancel claims,
eliminate liability for past infringement, create
intervening rights to continue accused
infringement in the future, open up design-
around opportunities, create a more favorable
prosecution history, defeat a charge of willful
infringement, help avoid an injunction, bolster
an inequitable conduct defense, and sometimes
enable a stay of expensive litigation. All of this
can be achieved at a small fraction of the cost of
Post-Grant Patent Practice:
Review and Reexamination
Course Description
he first day of this two-and-a-half-day course focuses on ex parte reexamination and also
addresses inter partes reexamination. The second day is dedicated to inter partes review.
Topics covered in the final half day include post-grant review, covered business method
patent review, and ethical issues related to review proceedings and reexamination. The course
covers strategies, tactics, best practices and case studies for review and reexamination. The course
is for both patent practitioners who appear before the PTO in these proceedings, as well as litigators
who must deal with the increasingly common role of PTO proceedings in the context of disputes.
15.0 Hours
T
KEVIN B. LAURENCE MATTHEW C. PHILLIPS
OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT
ALEXANDRIA, VA
RENAISSANCE IP LAW GROUP LLP
PORTLAND, OR
Course Faculty The instructors are experienced at representing both patent owners and accused infringers
in review proceedings and reexaminations. They have taught the Post-Grant Patent Practice course for five
years and continuously update their treatise and slides to provide practical advice based on current cases
involving adversarial post-grant matters. They were actively involved in bar associations efforts to help the
PTO design and implement the new review proceedings created by the America Invents Act (AIA). They have
written widely on review and reexamination topics for Intellectual Property Today.
The battleground of patent validity is
shifting from courts to the PTO. Review
proceedings, including post-grant
review and inter partes review, are
powerful, fast-track trials before the
Patent Trial and Appeal Board. Review
proceedings offer several advantages
over validity challenges in a court
proceeding including cost, predictability,
effectiveness, speed, and the ability to
pursue strategies that would not be
feasible in court. This course explores
these factors and provides training for
participating in review proceedings.
Reexamination remains popular
either alone or alongside court battles.
The PTOs Central Reexamination Unit
provides a forum that can result in
many favorable outcomes, at a small
fraction of the cost of litigation.
Whatever side of the battle you are on,
you must know how to engage in the
new battlefields called review as well as
the existing battlefield called
reexamination.
litigation or advantageously deployed in
conjunction with litigation.
The Patent Trial and Appeal Board has shifted
the balance in favor of the PTO as the patent
validity battlefield of the future by creating new
more powerful, fast-track, litigation-like review
proceedings, including post-grant review and
inter partes review. Inter partes review provides
an opportunity to challenge the validity of a
patent twice: first at the PTO based on printed
publications and subsequently in litigation based
on other available grounds. Stays are being
granted liberally when inter partes reviews are
filed in light of the statutory requirement for
rapid completion of these new proceedings. As
a result, validity challenges are proceeding in
serial fashion. In the first phase of a bifurcated
validity challenge, complicated arguments
regarding the prior art can be rapidly resolved by
trained specialists at the PTO, whereas in the
second phase, less technical arguments
regarding commercial activity or other
invalidating grounds can be resolved by a judge
or jury. This sequential approach can simplify
claim construction and narrow issues for an
infringement portion of the litigation, and thus
may reduce overall costs. Lead counsel in an
inter partes review proceeding must be a
registered patent attorney, but it is possible for
litigation counsel to participate in the proceeding
even if the litigation counsel is not registered.
Integrating the inter partes review and litigation
teams can provide a smooth transition to the
litigation upon completion of the review
proceeding.
Reexamination has often been referred to as
a second bite at the apple, but the bite size
provided by inter partes review is more on par
with that of litigation due to its provisions for
limited discovery. The comparative weakness of
ex parte reexamination is offset by its absence of
estoppel implications. Indeed, the deepest
concerns regarding inter partes review often
focus on its legal estoppel provisions that
prevent a challenger who is unsuccessful in an
inter partes review from attacking a claim in any
forum based on other printed prior art
publications. This concern overlooks the
advantages of this new proceeding and does not
acknowledge that failure to invalidate a claim in
litigation results in much harsher estoppel. The
estoppel of inter partes review will have a
considerably smaller scope than the estoppel of
a failed district court challenge. In light of the
complexity of many prior art arguments and the
benefits of the serial validity and infringement
cases, consideration of a challenge at the PTO
should not be a back-up plan, as reexamination
often is. Rather, inter partes review should be
used prior to or concurrently with litigation.
For patent challengers, the course provides
training to:
Analyze the advantages and disadvantages
of review and reexamination compared to
litigation
Make well-informed choices between review
proceedings and reexamination
Understand the critical role of review and
reexamination in the context of a dispute
and develop strategies based on anticipated
or concurrent litigation
Appreciate estoppel implications both
official and unofficial of review and
reexamination
Utilize review and reexamination to obtain a
stay or other benefits in related litigation
Unravel the AIAs review statutes and
decipher the PTOs review rules to
understand how reviews are really conducted
Prepare a petition for review or a request for
reexamination that complies with all
requirements and gets granted
Learn what the reexamination statistics really
mean
Advantageously utilize the different
standards applied for claim interpretation at
the PTO and claim construction in litigation
as well as the differing burdens of proof
Recognize possible changes to the
construction of the claims in the litigation
based on the review or reexamination that
opens up design-around opportunities,
creates a more favorable prosecution history
for the purpose of claim construction, or
impacts estoppel theories
Create intervening rights that eliminate
liability for past infringement or allow
continuation of accused infringement in the
future
Tactically use serial ex parte reexamination
requests
Correctly and strategically use petitions and
declarations
Understand the repercussions that review
and reexamination can have on settlement
The course balances the perspectives of
patent challengers and patent owners so the
above items are also presented from the view
of the patent owner. Additionally, the course
provides training for patent owners to:
Avoid, when possible, intervening rights that
arise via the cancellation or amendment of
claims or from mere argument regarding
claim scope
Select information to be disclosed to the PTO
from concurrent litigation or other PTO
proceedings
Understand the timing of events in all post-
issuance PTO proceedings so that you are not
caught off guard
Navigate the maze of review and
reexamination procedures to avoid
unfortunately common mistakes
G
as Vegas's nightlife has never been hotter. Plenty of fun
awaits you as the number of high-profile nightclubs, trendy
lounges, and sizzling entertainment venues continue to grow.
L
Las Vegas, NV
Caesars Palace
8:15 a.m. 11:30 a.m. and
1:30 p.m. 4:45 p.m. (Sat-Sun)
8:15 a.m. 11:30 a.m. (Mon)
The broad spectrum of available software
patent protection opportunities that appeared
available after State Street Bank and AT&T v.
Excel was questioned in the Bilski decisions. In
its Bilski decision, the CAFC retreated from the
useful, concrete and tangible result analysis to
tied to a particular machine or apparatus or
transforms a particular article tests. The
Supreme Court found thi s machi ne-or-
transformation test useful but too narrow. It
fell back on general principles of abstractness.
It also declined to exclude all business methods
from patentability, but it seemed to invite their
close scrutiny. In Mayo v. Prometheus, the
Supreme Court spoke again on abstractness, and
the need to add an inventive concept to a law
of nature. Lower courts as well as the USPTO
continue to struggle with the application of the
Supreme Court's decision and the CAFC decisions
attempting to follow them. With Alice v. CLS
Bank having been taken on cert and argued in
March with a decision expected in June, hopes
for a rule on decoding abstractness and fears of
a decision affecting the value of many computer-
implemented inventions both exist. Practitioners
need to understand the signposts left by the past
decisons and whatever the new guidance will be
from the Supreme Court.
Software-based inventions face another issue.
Some recent cases have suggested that
infringement may be avoided when infringing
activity crosses borders or multiple parties are
involved in the acts or elements comprising
infringement of a claim. The doctrine of joint
infringement (a/k/adivided infringement) as
devel oped i n BMC Resources, I nc. v.
Paymentech, Muniauction Inc. v. Thomson Corp.
and other cases continues to evolve. It poses
particular problems for proving infringement as
more computer-based inventions use processors,
storage and specialized data processing services
of others, sometimes located in the cloud.
Using resources in the cloud can involve
multiple actors and jurisdictions.
Software Patents: Procuring
and Enforcing After Alice
his course addresses the difficult and sophisticated task of how best to claim, prosecute,
and litigate software-based inventions in their rich variety so as to have their patents held
not invalid and infringed by the Federal Circuit. But that rich variety requires a variety of
disparate claiming, specification drafting, prosecution, and litigating techniques.
The America Invents Act (AIA) impacts software patents in general and business method patents
in particular. Specifically, a new inter partes review proceeding is available during litigation for
defendants to challenge certain business method patents at the USPTO on a wide variety of
invalidity grounds.
Course Description
15.0 Hours
T
DORSEY & WHITNEY LLP
MINNEAPOLIS, MN
WINTHROP & WEINSTINE
MINNEAPOLIS, MN
ALDO NOTO
ANDREWS KURTH LLP
WASHINGTON, DC
STUART HEMPHILL DEVAN PADMANABHAN
Course Faculty The faculty for this course has prosecuted scores of software-related patents, for business
methods and more traditional computer-based technical subject matters, over a collective USPTO
experience of more than 60 years. Each has also been involved in litigation and licensing of software-
related patents. They can provide a wide range of viewpoints from which to consider strategies for
procuring, exploiting and enforcing software patents.
Director Kappos has recently stated that
patents on software are every bit as well
deserved as patents on air flight, electric bulbs
and such more traditional inventions. At the
same time, he acknowledges past, often
inadequate and inconsistent examination of
software patents, but points out improvements
at the USPTO for increasing examination
quality. This is a critical time to get an important
update on software patent law, given the
impact of the America Invents Act (AIA) and
recent and pending CAFC and Supreme Court
decisions, including Alice v. CLS Bank. This
course will cover the different claim drafting,
prosecution, and litigation techniques required
to address the rich variety of software-based
inventions, in the context of current law and
up-to-the-minute court decisions.
UPDATED!
The course and text address why different
software applications (e.g., Internet-related
software) requi re speci al cl ai m drafti ng,
prosecution or litigation techniques. Claim styles
and limitations designed to meet the somewhat
unclear 101 standards are discussed. This
course also explores the countercurrents arising
from concern about the qual i ty of some
business method patents and from the open
source movement.
Legal ethi cs i n the context of duty of
disclosure under 37 CFR 1.56 and USPTO
conflict of interest issues will be presented for at
least one hour on the third day, as currently
estimated.
Speakers were awesome, articulate, organized,
knowledgeable and friendly.
The material covered was very focused and
practical. Thank you!
Examples of claim types were great!
Course Materials
At the Course, attendees wi l l recei ve a
comprehensive text and slides, written by the
distinguished faculty. G
eijing Noodle No. 9 provides a striking
casual dining atmosphere and serves
authentic Northern Chinese cuisine, with an
emphasis on handmade noodles.
B
PRGs Fall Hotel
September 27- October 2, 2014
3570 Las Vegas Boulevard South
Las Vegas, NV 89109
Reservations:
866-227-5944
PRGs 2014 Annual Fall
Advanced Courses Program will
be held at the elegant Caesars
Palace in Las Vegas, Nevada.
Room reservations must be made by August 26,
2014. When making your reservation, be sure
to identify yourself as a Patent Resources Group
attendee to obtain the special PRG rate. Check
out what Caesars Palace has to offer at
www.caesars.com and see why our $180 per
night room rate provides such an incredible
value!
Receptions for Attendees and Faculty:
PRG receptions provide an opportunity for
networking, plus delicious, complimentary
hors doeuvres and beverages on the first
evenings of class: Saturday, September 27
and Tuesday, September 30. Spouses, children
and guests of attendees and faculty are
welcome and are certain to have an
enjoyable time.
Transportation: McCarran International
Airport (LAS) is served by several major
airlines. Shuttle service between the airport
and Caesars Palace is available.
aesars Palace is known throughout the
world for its beauty and exceptional
levels of service. The hotel includes a
huge casino, over 20 restaurants and
bars, and The Colosseum, which provides
entertainment from world-class stars.
The Garden of Gods Pool Oasis covers over 4
acres of lush lawns, elegant fountains and
statues, with three large swimming pools and
two outdoor whirlpool spas. The Rio Secco and
Cascata Golf Courses, just minutes away from
the Las Vegas Strip, offer challenging holes and
fantastic views. Enjoy a unique spa experience
at the Qua Baths & Spa, ranked 28th in Conde
Nast Traveler's 2013 Reader's Poll of the top
100 Resort Spas in the U.S. The Caesars Palace
Concierge and Business Center make "business
as usual" possible for their guests. To access
detailed information and more photos of the
resort, go to www.caesars.com.
An Outstanding Venue!
C
DON'T MISS THIS DEAL!
Room rate: The sleeping room rate available to
PRG attendees is only $180.00 per night, single
or double, plus tax. This is the same rate (well,
actually, it's $1 more) that we were able to
offer the last time we were at Caesars
Palace in 2011!
and Seminar Series
REGISTRATION Caesars Palace, Las Vegas, NV
September 27 - October 2, 2014
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enter the billing address here:
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ORG.
PLEASE PRINT
REGISTRATION OPTIONS:
Mail or Overnight:
1725 Jamieson Avenue
Alexandria, VA 22314
FAX: (703) 683-1895
ONLINE: www.patentresources.com
You may register online or by fax, mail or courier.
You may submit tuition either by check, payable
to Patent Resources Group, Inc., or by credit card
(charges are authorized by your completion of
this form). The course tuition does not include
hotel accommodations or meals, but does
include all instructional materials, and morning
and afternoon refreshments, as well as PRGs
reception-cocktail party.
Early Registration Deadline: July 28, 2014
Final Registration Deadline: August 26, 2014
Seminar Series:
(see pages 28 and 29 for more information)
Tuition for each Seminar is $895
September 29, 2014 (Mon)
Patent Law for Scientists and Engineers
September 30, 2014 (Tues)
America Invents Act: Monumental
Changes, the Consequences and the
Unanswered Questions
Fundamental Building Blocks for Creating
and Enforcing the FDA Orange Book
Listable U.S. Patent
When, Why and How to Effectively Appeal
to the USPTO Patent Trial and Appeal Board
Chemical Patent Practice
Crafting and Drafting Winning Patents
Designing Around Valid U.S. Patents
Patent Due Diligence in the AIA Era
Post-Grant Patent Practice: Review and
Reexamination
Software Patents: Procuring and
Enforcing After Alice
G
UPDATED!
(Tues-Thurs)
Art & Science of Patent Searching -
Patentability, Validity & Infringement
Art & Science of Patent Searching and
Optional Patent Searching Workshop
(combined course and workshop is
$2,590 through July 28, 2014 and
$2,690 after that date)
Comprehensive PCT Practice: How to
Master Its Challenges
Drafting Patent License Agreements
Federal Circuit Law (2012-2014)
Three-Day Courses:
Tuition for each three-day course is $2,195
through July 28, 2014
and $2,295 after that date
Loyalty Program members
save $200 on tuition
for 3-day Advanced Courses
and $100 for 1-day Seminars
For information about registration deadlines; cancellation, transfer and substitution privileges; CLE; and other details,
go to: www.patentresources.com or call us: (703) 682-4860.
Brochure Code: A14M2
Introducing PRGs
NEW Seminar Series!
PRG is excited to announce our new Seminar Series for
experienced patent practitioners! Unlike our intensive
3-day Advanced Courses, our Seminar Series provides
courses on current patent topics that are more
appropriately handled through a shorter course length,
but with the same outstanding PRG quality.
Our Seminar Series will debut this Summer and Fall,
and we will announce other 2014 and 2015 offerings
as they are scheduled.
Our current 2014 Seminar Series offerings:
New Brunswick, New Jersey
The Heldrich Hotel and Conference Center
To register for any of these and future
offerings in our Seminar Series, please visit our
website at www.patentresources.com.
You can also register for the Las Vegas Seminar
series using the registration form on page 27
of this catalog.
Monday-Tuesday, June 16-17, 2014
The Coming AIA IPR and PGR Tsunami for U.S. Pharma
Patent Owners
This up-to-the-minute course teaches the pharmaceutical patent
practitioner how to use fundamentally sound principles to
prepare and prosecute United States pharma patent applications
according to best practices to be able to obtain drug substance,
drug product, and product-by-process (if product is novel) patent
claims that qualify for listing in FDAs Orange Book and that, very
importantly, should have enhanced chances of survival when
challenged under AIA's IPR and/or PGR post-grant proceedings.
Wednesday, June 18, 2014
Fundamental Building Blocks for Creating and Enforcing
the FDA Orange Book Listable U.S. Patent
In both lecture and interactive formats, this course will provide
comprehensive and practical guidance to help todays counselor
apply industry considerations to the procurement of patents, to
the Orange Book listing process, and to defense against
challenge in ANDA litigation and PTO post-grant proceedings
such as IPR and PGR. The course will address common mistakes
that interfere with the counselor's goal of creating enforceable
Orange Book listable patents. Unlike the related Tsunami
course, this course focuses on what happens post-drug
approval. The practical guidance offered by this course is
designed to empower anyone with responsibility in any phase of
pharmaceutical product patent portfolio development, licensing,
and litigation.
Las Vegas, NV
Caesars Palace
Tuesday, September 30, 2014
When, Why and How to Effectively Appeal to the USPTO Patent
Trial and Appeal Board
This course covers everything that patent attorneys and patent agents need to
know about the appeals process based on the latest rules, including determining
whether or not it is prudent to file an appeal, developing an effective brief to
the Board, and responding to Office actions throughout the process.
Fundamental Building Blocks for Creating and Enforcing the FDA
Orange Book Listable U.S. Patent
In both lecture and interactive formats, this course will provide comprehensive
and practical guidance to help todays counselor apply industry considerations
to the procurement of patents, to the Orange Book listing process, and to
defense against challenge in ANDA litigation and PTO post-grant proceedings
such as IPR and PGR. The course will address common mistakes that interfere
with the counselor's goal of creating enforceable Orange Book listable patents.
Unlike the related Tsunami course, this course focuses on what happens post-
drug approval. The practical guidance offered by this course is designed to
empower anyone with responsibility in any phase of pharmaceutical product
patent portfolio development, licensing, and litigation.
Washington, DC
(Arlington, VA)
Hilton Crystal City
Tuesday, July 8, 2014
Post-Grant Patent Practice:
Review Proceedings
With the USPTO playing an ever more
important role in the patent validity
battleground, review proceedings are
more vital than ever. This lecture will
cover strategies, tactics, best
practices, and case studies for inter
partes review, covered business
method patent review, and post-grant
review proceedings before the Patent
Trial and Appeal Board. Because most
review proceedings are conducted in
conjunction with litigation, the course
emphasizes the use of review
proceedings as part of litigation
strategies.
Wednesday, July 9, 2014
First Inventor-to-File Law and
Ramifications Under Sections
102 and 103: An Intensive,
Detailed Analysis of What
Constitutes Prior Art Under the
Radically Changed Statute
The major changes to United States
patent law made by the America
Invents Act are those introduced by
rewritten 102 and revised 103, and
their impact on the universe of prior art
that renders claims unpatentable for
lack of novelty or for obviousness. This
workshop focuses on those changes.
Monday, September 29, 2014
Patent Law for Scientists and
Engineers
This course will provide technology
experts with a solid understanding of
the fundamentals of patent law.
Representative topics to be covered
include the patent procurement
procedures at the USPTO, the parts of a
patent, claim drafting strategies, and key elements of sections 102 (novelty) and
103 (non-obviousness). We will cover the types of activities that scientists and
engineers should avoid because they could lead to a subsequent determination
that your idea is not patentable (or an issued patent is ruled invalid) because it
was already in the public domain and thus not novel. The enhanced
understanding of patent law provided by this course will allow scientists and
engineers to add even more value to their organizations innovation efforts.
America Invents Act: Monumental Changes, the Consequences
and the Unanswered Questions
The extensive changes introduced by the America Invents Act require all patent
practitioners to understand both the intricacies of the new law, as well as when
the AIA applies and when the pre-AIA version of the law applies. The content of
this seminar was created with the goal of assisting patent attorneys and agents
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the unresolved issues created by the new statutory language.
May 19-23, 2014
Patent Bar Review Course
Washington, DC (Arlington, VA)
Hilton Crystal City
June 9-13, 2014
New York, NY
Executive Conference Center
June 9-11, 2014
Patent Administration:
A Foundation for Success
New York, NY
Executive Conference Center
June 16-18, 2014
Seminar Series
New Brunswick, NJ
The Heldrich Hotel and
Conference Center
July 8-9, 2014
Seminar Series
Hilton Crystal City
July 8-10, 2014
Patent Administration:
A Foundation for Success
Hilton Crystal City
July 8-11, 2014
Winning Patents Workshop
Hilton Crystal City
August 4-8, 2014
Chicago, IL
Four Points by Sheraton
September 27-October 2, 2014
Annual Fall Program
Advanced Courses in Patent Law
Las Vegas, NV
Caesars Palace
September 29-30, 2014
Seminar Series
Las Vegas, NV
Caesars Palace
November 10-14, 2014
San Diego, CA
Hyatt Regency Mission Bay Spa and Marina
atent Resources Group, the
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Patent Law for Scientists and Engineers
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Art and Science of Patent
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1 7 2 5 J A M I E S O N AV E N U E
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IN PATENT LAW

PRG Fall 2014 Advanced Courses Catalog

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PRG Fall 2014 Advanced Courses Catalog

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