2019 Patent Prosecution Boot Camp -Philadelphia, PA
May 13 to 15, 2019
Philadelphia , PA, United States
Are you interested in staying current on patent prosecution practice or involved in cross-disciplinary practice? Are you a new or junior lawyer, a patent agent, or a technical advisor? Are you a foreign practitioner who wants to understand and speak the language of the USPTO and US practitioners when sending instructions on a US case or when receiving instructions on a local case?
If your answer is “yes” to any of the above questions, or if you simply love patent law, please join us at the Loews Philadelphia for this 2.5-day patent prosecution seminar, which is being held immediately before AIPLA’s Spring Meeting.
Now in its 20th year, AIPLA’s Patent Prosecution Boot Camp is a comprehensive, CLE-accredited seminar that includes instructional lecture-style sessions with practical tips on U.S. and international patent preparation and prosecution, as well as hands-on interactive workshops that will walk you through drafting claims and responding to office actions. To ensure that the workshops are relevant to your practice, they are held in smaller groups according to technology backgrounds: (1) Biotechnology/Chemical, (2) Electrical/Software, and (3) Mechanical.
Day 1 focuses on preparation of a patent application.
Day 2 focuses on prosecution of the application to grant.
Day 3 is a half-day program dedicated to more advanced topics such as petitions, appeals, post-grant proceedings, and international practice.
View the Event Schedule & Program. Stay around after the Patent Prosecution Boot Camp and attend the Spring Meeting taking place at the same hotel. If you attend the Boot Camp and then register for the 2019 Spring Meeting, you will get $200 off your Spring Meeting registration fee.Check your Patent Prosecution Boot Camp registration confirmation email for details.
Program Agenda & Tentative Schedule
Monday, May 13, 2019 – Application Preparation
7:30 am - Breakfast, Welcome & Overview
7:40 am - Opening Remarks - Myra McCormack, Johnson & Johnson
8:00 am - Initial ‘Inventor’ Interview and Invention Disclosure
8:35 am - Inventorship
9:05 am – Patent Searching and Opinions
9:40 am - BREAK
9:55 am – Application Drafting and Provisional Applications
10:35 am – Overview of Design Patents
11:35 am – Filing Formalities
12:05 pm - BREAK
12:20 pm – LUNCH - Programs and Opportunities for Stakeholders Training at the USPTO - Unsu Jung, Office of Patent Training, US Patent & Trademark Office (invited)
1:35 pm – BREAK
1:50 pm – Claims Drafting Workshop: MECHANICAL
1:50 pm – Claims Drafting Workshop: ELECTRICAL
1:50 pm – Claims Drafting Workshop: BIOTECH/PHARMA/CHEMICAL
Tuesday, May 14, 2019 – Prosecution of a Patent Application
7:30 am - Breakfast
7:45 am - Responding to § 101 / §112 Rejections
8:35 am - Responding to § 103 Rejections
9:05 am – Restriction Elections / Double Patenting
9:45 am - BREAK
10:00 am – Continuations and RCEs
10:30 am – Examiner Interviews & Knowing the USPTO
11:05 am – Ethics, IDS & Duty of Candor
12:05 pm - BREAK
12:20 pm – LUNCH: “Shine a Light on the World: Drafting and prosecuting in light of varying laws and rules around the globe” - Greg Durbin, Polsinelli
1:35 pm – BREAK
1:50 pm – Responding to Office Actions: MECHANICAL
1:50 pm – Responding to Office Actions: ELECTRICAL/SOFTWARE
1:50 pm – Responding to Office Actions: BIOTECH/CHEMICAL
Wednesday, May 15, 2019 – Digging Deeper: Petitions, Appeals, Post-Grant Proceedings, and International Practice
7:45 am – Petitions and Appeals
8:40 am - Prosecution Tips from a Patent Litigator's Perspective
9:20 am – Issuance, Term, Certification of Correction, Disclaimers & Maintenance
10:00 am - BREAK
10:15 am – Post-Grant Proceedings
11:15 am – PCT Filings and International Patent Prosecution
12:45 am – Concluding Remarks
Loews Philadelphia Hotel
1200 Market St, Philadelphia, PA
Group Room Rate: $209 (single/double)
Room Block Cut-Off: April 22, 2019
Book your room by calling 1-888-575-6397 or make your reservation online:
Baker, W. Todd
Oblon, McClelland, Maier & Neustadt, L.L.P. | PartnerW. Todd Baker is Chair of the firm’s Post-Grant Patent practice group and is a member of the firm’s Management Committee.
Cassell, Justin J.
Workman Nydegger | ShareholderJustin counsels clients on patent procurement, intellectual property due diligence, validity and infringement, strategic international IP protection, post-grant proceedings, and preliminary patent enforcement and defense actions.
Cummings, Scott W.
Dentons | PartnerScott Cummings is a leader of Dentons' Post-Grant Group of the Intellectual Property and Technology practice. Dentons’ Post-Grant practice has received national accolades. In the 2018 Patexia IPR Intelligence Report performance ratings, Dentons was ranked number 1 for Petitioner representation, and ranked number 4 overall.
Schwegman Lundberg & Woessner | AttorneyTony Curtis is a registered patent attorney at Schwegman Lundberg & Woessner. His practice includes patent procurement, portfolio management and strategic counseling in a wide range of electrical, software, and mechanical technologies.
Durbin, Gregory P.
Polsinelli | ShareholderGreg’s practice involves the full spectrum of patent matters. At its core, however, is patent portfolio management — preparing, filing, and prosecuting strategic patents, both in the United States and internationally.
Esposito, Dr. Robert A.
RatnerPrestia | AssociateDr. Robert A. Esposito is a registered Patent Attorney with over nine years of experience drafting and prosecuting patent applications in the areas of Electrical and Computer technology.
Gibb, III, Frederick W.
Gibb & Riley | Principal and FounderFrederick W. Gibb, III is a principal and founding member of the firm, Gibb & Riley, and is a registered patent attorney principally drafting and prosecuting patent applications.
Gwin, H. Sanders
Shumaker & Sieffert, P.A | PrincipalH. Sanders Gwin, Jr. is a Principal of Shumaker & Sieffert. Sanders specializes in patent preparation/prosecution and patent infringement/validity counseling in the chemical, materials and software fields.
Hansen, Robert M.
The Marbury Law Group | PartnerRobert (Bob) Hansen was a founding partner of Hansen Huang Technology Group, LLP which merged with Roberts Mardula & Wertheim, LLC to form The Marbury Law Group. Mr. Hansen has extensive experience in all aspects of intellectual property law, including patent preparation and prosecution; patentability, validity, and infringement opinions; sale and licensing of intellectual property; strategic patent portfolio development; and litigation.
Irving, Thomas L.
Finnegan | PartnerTom Irving has more than 40 years of experience in the field of intellectual property law. His practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination.
Donaldson | Intellectual Property Counsel
Lee & Hayes | Patent Attorney/PartnerBea leads Lee & Hayes’ International Practice. She advises and assists clients on a variety of intellectual property issues including drafting patent applications for international prosecution to enhance the business value of assets and managing international patent portfolios.
Maier & Maier | PartnerMr. Kunin is a Partner at Maier & Maier PLLC, where he specializes in all areas of patent practice. His expertise includes post-issuance proceedings at the United States Patent Office, opinions of counsel, advising attorneys and our clients on complex patent prosecution matters, patent litigation strategy, and United States Patent Office patent policy, practice and procedure, for which he is highly sought after for expert testimony.
Dicke, Billig & Czaja, PLLC | Senior AttorneyStephanie is a registered patent attorney. In addition to patent prosecution, Stephanie has experience in trademark prosecution and maintenance, opinions, licensing, due diligence review and dispute resolution including intellectual property litigation.
Lezak, Arriènne (Angel) M.
Polsinelli | ShareholderA registered patent attorney and former senior patent examiner, Angel approaches prosecution with a personal, creative, and effective approach that is informed by extensive experience in the arts.
Lieberman, Rochelle "Rocky"
Lieberman & Brandsdorfer, LLC | MemberRochelle Lieberman, Esq., is a member of the law firm of Lieberman & Brandsdorfer, LLC, where she specializes in intellectual property law (i.e. patents, trademarks, and copyrights). Ms. Lieberman is licensed to practice before the U.S. Patent & Trademark Office.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | AssociateWith a professional career spanning across three countries and with more than ten years of legal experience across two continents, Yelena’s unique background enables her to understand cultural nuances and helps her to advise a broad range of clients across the world.
Mueting, Raasch & Gebhardt | Patent AttorneyAnn is a patent attorney practicing in the areas of chemical and biotechnology patent law including material science, polymers, chemical process technology, semiconductor process technology, pharmaceuticals, immunology, peptide and nucleic acid technologies, medical treatments, and related opinion work.
Murphy, Ph.D., Amanda K.
Finnegan | PartnerAmanda Murphy, Ph.D., focuses her practice on strategic client counseling, portfolio management, and patent prosecution for a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.
Mueting, Raasch & Gebhardt | Patent AttorneyRakhi is a patent attorney practicing in the areas of domestic and international patent protection and related opinion work in the mechanical and electro-mechanical arts with an emphasis on medical devices, software systems, high technology filtration, acoustics, material science and material handling.
Duane Morris LLP | PartnerVicki G. Norton, Ph.D., serves as a team lead for the Duane Morris Life Sciences/Biotech industry group. In over two decades of life science patent counseling and litigation, she has devised strategies for clients to successfully counter patent claims and demands totaling over $2 billion, has performed IP diligence for transactions and at the market offerings worth over $2.5 billion, and has formulated worldwide patent strategies for clients entering public markets with valuations of over $6 billion.
Oppedahl Patent Law Firm LLC | PartnerCarl Oppedahl is a frequent speaker on the Patent Cooperation Treaty. He is the author of the Ant-Like Persistence blog.
Osterbur, Stefan D.
Reising Ethington | Senior AttorneyStefan provides patent prosecution and preparation services to a wide range of clients, from solo inventors and start-ups to global enterprises.
Saul Ewing Arnstein & Lehr LLP | CounselDebora Plehn-Dujowich has extensive experience as a patent attorney focusing on life sciences technologies.
Polson Intellectual Property Law | Founder and Senior PartnerMargaret Polson, Founder and Senior Partner for Polson Intellectual Property Law, leads the firm in authority and expert knowledge of intellectual property law. Overseeing the preparation and prosecution of utility and design patent applications, trademarks, and copyrights, she also assists clients with licensing and intellectual property strategy and management.
Randall, David A.
Brooks Kushman P.C. | ShareholderDavid is a registered patent attorney with over 25 years of experience. He has represented clients in a variety of intellectual property matters, including patent, trademark and trade secret litigation throughout the United States, as well as multi-jurisdictional matters.
Brinks Gilson & Lione | ShareholderWith more than 25 years of experience in intellectual property law, Marc Richards has helped secure and defend the innovations for the world’s largest high performing companies and for the newest high tech start-ups.
Shumaker & Sieffert, P.A | PartnerJennifer is a patent attorney whose practice focuses on the areas of software and electronics.
Middleton Reutlinger | Director and Member of the Management CommitteeJohn Salazar currently serves as a member of Middleton Reutlinger’s management committee. He is a registered patent attorney and concentrates his legal practice in intellectual property, especially in patents, trademarks, copyrights and computer law.
Tolmar | Global Intellectual Property ManagerDr. Angela Sebor is a registered U.S. Patent Agent with a Ph.D. in Immunology and more than 23 years’ experience in patent law, primarily in the areas of biotechnology and pharmaceuticals.
Patterson + Sheridan | AssociateFrom her decade of experience as a materials engineer to her law practice today, Elise has always been driven by analyzing and improving technologies.
Smith, William F.
Baker & Hostetler | Of CounselBill Smith is a former administrative patent judge at the United States Patent and Trademark Office (USPTO). He focuses his practice on advising clients in complicated patent matters, including reexamination proceedings, appeals, interferences, post-grant proceedings before the Patent Trial and Appeal Board, and patent litigations.
Schwegman Lundberg & Woessner, P.A. | PrincipalTheresa Stadheim is a registered patent attorney at Schwegman Lundberg & Woessner. Theresa’s practice involves writing and prosecuting patent applications in the areas of wireless technologies, military and government technology, cryptographic and secure systems, computer architecture and programming, memory devices, and oil and gas industry technologies.
Stanton Consulting | PrincipalBrian R. Stanton, Ph.D. trained as a molecular geneticist specializing in cancer research. After post graduate work utilizing embryonic stem cell technology to study animal development, he joined the US Patent and Trademark Office where he spent 12 years working in biopharmaceutical patenting.
Sundby, Suzannah K.
Managing Partner | Canady + Lortz LLPSuzannah practices all aspects of intellectual property law across a diverse array of technological fields including biochemistry, molecular biology, recombinant technologies, small molecules, pharmaceuticals, biologics, vaccines, microfluidics, diagnostics, medical devices and treatments, orphan drugs, catalyst compositions, and nanotechnology.
Tripodi II, Paul D.
Wilson Sonsini Goodrich & Rosati | PartnerPaul D. Tripodi II is a partner in the Los Angeles office of Wilson Sonsini Goodrich & Rosati, where his practice focuses on intellectual property litigation, including patent litigation, contract disputes involving intellectual property, and trade secret misappropriation. He has been involved in both bench and jury trials, as well as proceedings before various international tribunals and the International Trade Commission (ITC).
PTAB Publishes Update to AIA Trial Practice Guide
July 18, 2019The US Patent and Trademark Office (USPTO) on July 15, 2019, published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Patent Trial and Appeal Board (PTAB).
New Examination Guide on Specimen Examination
July 16, 2019The United States Patent & Trademark Office published a new examination guide titled, "Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens."
Federal Circuit Says No Standing for GE Without Specific Injury
July 15, 2019The US Court of Appeals for the Federal Circuit on July 10, 2019, held that General Electric Co.‘s position as a patent owner’s competitor was insufficient to establish standing to appeal a Patent Trial and Appeal Board decision.
PTAB Designates Decision as Precedential
July 12, 2019The US Patent and Trademark Office on July 10, 2019, designated as precedential Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19).
IP Practice in China 2019 Trip
July 11, 2019The IP Practice in China Committee delegation kicked of this year's trip with a dinner with Dennis Duncan, the USPTO IP Attache based in Beijing, who provided a briefing of current developments in China.