2024 Patent Prosecution Boot Camp - San Jose, CA

February 7 to 9, 2024

Location

Silicon Valley Regional Office - USPTO
26 S. Fourth Street

San Jose, CA, United States

Contact

Andrea Alder

Registration

Fee: Pre-Registration has closed. Email aalder@aipla.org to inquire about on-site registration.

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 in San Jose for this 2.5-day patent prosecution seminar

Now in its 24th 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.

Sponsored by: 

WorkmanNydegger

 


Program Agenda & Schedule

Download full Agenda & Schedule

Wednesday, February 7  (8:30 am - 5:30 pm)

Application Preparation - Including:

  • Opening Remarks
  • Initial ‘Inventor’ Interview and Invention Disclosure
  • Inventorship
  • Patent Searching and Opinions
  • Application Drafting and Provisional Applications
  • Overview of Design Patents
  • Filing Formalities
  • Afternoon Claims Drafting Workshops
    • MECHANICAL
    • ELECTRICAL
    • BIOTECH/PHARMA/CHEMICAL
  • Networking Reception (5:30 - 6:30 pm)

Thursday, February 8 (8:30 pm - 5:30 pm)

Prosecution of a Patent Application - Including:

  • Responding to § 101 / §112 Rejections
  • Responding to § 103 Rejections
  • Restriction Elections / Double Patenting
  • Continuations and RCEs
  • Examiner Interviews & Knowing the USPTO
  • Ethics, IDS & Duty of Candor
  • Afternoon Workshops: Responding to Office Actions
    • MECHANICAL
    • ELECTRICAL/SOFTWARE
    • BIOTECH/CHEMICAL

Friday, February 9 (8:30 am - 1:00 pm)

Digging Deeper: Petitions, Appeals, Post-Grant Proceedings, and International Practice - Including:

  • Petitions and Appeals
  • Prosecution Tips from a Patent Litigator's Perspective
  • Issuance, Term, Certification of Correction, Disclaimers & Maintenance
  • PCT Filings and International Patent Prosecution
  • Program concludes at 1:30 PM Pacific

Registration includes continental breakfast, the networking reception, and lunch on Wednesday & Thursday.


Registration Fees

AIPLA Regular Members:  $495
AIPLA Solo Members: $395
AIPLA Junior and IP Paralegal Members: $295
AIPLA Government, Academic, & Student Members: $99

Non-Members: $895


Venue & Hotel Details

The Boot Camp will be held at the
Silicon Valley Regional Office of the USPTO
26 S. Fourth Street
San Jose, CA 95112

We have reserved a block of rooms at the Four Points Sheraton, which is walking distance to the USPTO Regional Office.

HOTEL RESERVATION LINK

Special Group Rate: $299 per night plus applicable taxes and fees.  72 hour cancellation required. 

Overnight self parking: $39 plus taxes per night.

Room block expires January 8, 2024.  Be sure to book early! 

Four Points by Sheraton
San Jose Downtown
211 S. First Street
San Jose, California 95113


Speakers

  • Becker, Jordan

    Perkins Coie | Partner

    Jordan Becker has 30 years of experience as a patent lawyer, successfully obtaining thousands of patents for his clients across a wide range of technologies, including software, electronics, and mechanical devices. As a trusted advisor to startups and public companies, Jordan focuses on patenting cutting-edge, high-tech inventions. He loves science and technology, and is passionate about using his skills and experience to give his clients a competitive advantage in the marketplace. To protect their investments in research and development (R&D), Jordan develops customized patent strategies, applies for and obtains patents, and builds patent portfolios that support his clients’ business goals.
  • cassell, Justin-Square Cassell, Justin

    Workman Nydegger | Shareholder

    Justin 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.
  • Curtis, Tony200 Curtis, Anthony

    Schwegman Lundberg & Woessner | Attorney

    Tony 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.
  • Harris, Phil

    Holland & Hart | Partner

    Phil Harris is a partner, registered patent attorney, and patent practice group leader at Holland & Hart. His practice focuses on client counseling along with preparing and prosecuting U.S. and foreign patent applications (with special focus on cutting-edge technology) for clients of various structures and industries, including wireless communications, network design, machine learning and artificial intelligence, memory and computer architecture, circuit and chip design, methods of manufacturing, medical devices, and other complex technologies.
  • Hjelle square200 Hjelle, Lucas

    Schwegman Lundberg & Woessner, PA | Principal

    Lucas Hjelle has been a patent attorney at Schwegman Lundberg & Woessner for the last twelve years. Lucas received his B.S. degree in Electrical and Computer Engineering from Cornell University in Ithaca, NY, with a focus on digital signal processing and location-based technologies. He then worked full-time in Electrical Engineering and Aerospace for over ten years, including hardware engineering at LinksPoint (Norwalk, CT), GPS and INS engineering at Draper Laboratory (Cambridge, MA), and Senior Navigation Engineer at Honeywell (Minneapolis, MN). Lucas received his J.D. degree from William Mitchell College of Law, with a focus on Intellectual Property and legal research.
  • Irving, Tom 200 Irving, Thomas L.

    The Marbury Law Group, PLLC | Partner

    Tom Irving has more than 46 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. He counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis.
  • Johnson, Andrew

    Donaldson | Intellectual Property Counsel

    Andy Johnson has been practicing patent law for nearly 15 years, first as an IP litigator at Faegre Baker Daniels (now Faegre Drinker) and now as in-house IP Counsel at Donaldson Company, Inc.
  • Kwong,Stephanie Kwong, Stephanie

    Abbott Laboratories | Senior IP Counsel

    Stephanie Kwong has been working in the patent prosecution field for over 17 years. She is currently Senior Intellectual Property Counsel at Abbott Laboratories in Plymouth, Minnesota within their structural heart division. Prior to her in-house position, she worked at Twin Cities law firms and enjoyed a diverse practice encompassing patent prosecution, trademark prosecution, patentability analysis, FTO, due diligence and competitive monitoring. She currently serves as the President of the Minnesota Intellectual Property Law Association.
  • Lieberman, Rocky 200 Lieberman, Rochelle "Rocky"

    Lieberman & Brandsdorfer, LLC | Founding Member

    Rochelle Lieberman, also known as Rocky, is a founding member of the law firm of Lieberman & Brandsdorfer, LLC. Rocky is a registered patent attorney with 30 years of experience in the field, including both private practice and as a patent examiner with the U.S. Patent and Trademark Office. Rocky’s practice is directed at patent searching, opinions, preparation, and prosecution, representing clients in the technical areas of mechanical, electrical, and computer engineering, and computer science, including artificial intelligence and machine learning.
  • Mazzola_photo_AIPLA2021AM Mazzola, Robert

    Waterstone Edge | Attorney & Founder

    RRobert Mazzola, a seasoned corporate and intellectual property lawyer, has steered countless companies to success, from startups to public entities. The focus of his expertise is corporate and intellectual transactions, including patent prosecution. Notably, at Haynes and Boone in Palo Alto, Robert honed his skills in patent prosecution, working with large tech companies. At Pied Parker, he scaled the patent portfolio from a single application to fifty and facilitated seed funding, acquisitions, and partnerships with publicly traded companies.
  • Moran Ricardo 200 Moran, Ricardo

    Schwegman Lundberg & Woessner | Principal

    Ricardo Moran is a registered patent attorney practicing intellectual property law with an emphasis on small-molecule pharmaceuticals and agrochemicals and their formulations; imaging agents; and materials science. Dr. Moran’s practice focuses on chemical and pharmaceutical intellectual property law, including pharmaceutical patent litigation; preparation and prosecution of patent applications; infringement, validity, patentability, and due diligence analyses and opinions; and counseling of clients in a wide range of aspects of intellectual property law.
  • Morozova, Yelena

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | Partner

    Yelena Morozova is a partner in the London office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP / Finnegan Europe LLP. Yelena is an experienced patent attorney with technical expertise across different fields of engineering, most particularly in information technology and software, telecommunications, and AI. Being qualified in the US and in Europe, Yelena practices in both jurisdictions, focusing on patent procurement and portfolio development for a diverse range of global clients.
  • Norton Vicki - Photo_square200 Norton, Vicki

    Duane Morris LLP | Partner

    Vicki G. Norton, Ph.D., served as Chair of the AIPLA Biotech Committee from 2017-2019, and is the Chair of the IP Life Sciences division and Team Lead for the Life Sciences Industry Group at Duane Morris, where she provides strategic IP counseling, devises strategies for clients to successfully counter patent claims and demands, performs IP diligence for partnering and funding opportunities, and has formulated worldwide patent strategies for clients entering public markets with valuations of over $6 billion. Duane Morris has been named a Juristat 2021 top patent firm for art unit 1600.
  • O'Brien Michelle E.

    The Marbury Law Group | Partner

    Ms. O’Brien has over 20 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement and litigation, with an emphasis on chemical and pharmaceutical technologies. Exemplary areas of technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; pharmaceuticals, including new chemical entities and formulations; and novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds.
  • Osterbur, Stefan D.

    Van Hoven PC | Partner

    Stefan is co-chair of the 2024 AIPLA Patent Prosecution Boot Camp. Stefan is a partner with Van Hoven P.C., and routinely counsels clients on a wide variety of intellectual property matters, including domestic and foreign prosecution of utility and design patent applications, intellectual property portfolio management, infringement and clearance issues, and intellectual property transactions. Stefan's legal practice also focuses on preparing legal opinions concerning patent infringement and validity, trade secrets, and intellectual property litigation. He also has experience in federal court actions and the United States Patent and Trademark Office, such as Reexaminations and Post Grant Review.
  • Polson, Margaret square Polson, Margaret

    Polson Intellectual Property Law | Founder and Principal Attorney

    Margaret Polson is founder and principal attorney for Polson 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.
  • Richards, Marc

    Crowell & Moring LLP | Partner

    Marc Richards is a partner with Crowell & Moring LLP – With more than 25 years of experience in IP 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. His current practice focuses on assisting clients in developing and managing patent portfolios in emerging technologies such as, 3D printing, artificial intelligence, block chain technology, and cloud computing. As a seasoned patent attorney, his experience in litigation, patent office inter partes proceedings and patent prosecution translates into confident navigation of complex intellectual property matters.
  • rogers, JenniferSquare200 Rogers, Jennifer

    Shumaker & Sieffert, P.A | Partner

    Jennifer Rogers is a registered patent attorney and Principal at the law firm of Shumaker & Sieffert, P.A. Her law practice focuses on patent preparation, patent prosecution before the United States Patent and Trademark Office and foreign offices, and client counseling, in the areas of software and electronics. Jennifer has drafted and prosecuted patent applications that cover a wide variety of computer- and software-related technologies, including data compression, computer networks, computer security, mobile devices, radio-frequency identification, and others.
  • St. Amour, Mark

    Bejin Bieneman PLC | Associate

    As an associate with Bejin Bieneman PLC, Mark assists clients with patent prosecution in the US and internationally. He has experience with in a range of technology areas, including in the automotive, packaging, medical, and other industries, as well as litigation experience with patents, copyrights, and trademarks. Prior to his legal career, Mark was a mechanical engineer in the powertrain department for a major automotive manufacturer, where he rotated though numerous positions that included manufacturing process engineering, production and assembly support engineering, and product engineering.
  • Uribe - square200 Uribe, Mauricio

    Knobbe Martens | Partner

    Mauricio Uribe is the Chair of the Software/IT and Electrical practice groups at Knobbe Martens. Mauricio has extensive experience in comprehensive client counseling in all aspects of intellectual property law. Mauricio is well versed in patent prosecution matters and portfolio development, especially in software, electrical and telecommunication technologies. He has counseled various clients on patent and technology licensing matters, including standards essential patent licensing. Mauricio is a frequent lecturer and author on intellectual property topics and emerging technologies, including Generative AI policies and intellectual property.
  • Valeyko, Nichole

    Merck & Co., Inc. | Director - IP Legal Group

    Nichole M. Valeyko is a registered U.S. Patent Attorney and has acted as IP counsel for over 15 years. She is currently a Director in the IP Legal group at Merck & Co., Inc. in Rahway, New Jersey, where she is the Committee Chair for the Merck Legal Network Diversity Committee and head of the U.S. Patent Practice Committee. Nichole holds a Bachelor of Science in Biology from Virginia Tech, a law degree from Seton Hall School of Law, and a Master of Science in Biotechnology from Johns Hopkins.
  • Rash, Brandon

    Akin Gump | Partner

    Brandon has substantial experience in all aspects of patent litigation, from pre-litigation, through trial and appeal. He has served as lead counsel in district court actions and ITC investigations. He has substantial experience in the U.S. District Court for the Eastern District of Virginia (EDVA), known as the “Rocket Docket,” where he served as a law clerk to the Honorable Henry E. Hudson.
  • Tripodi II, Paul D.

    Akin Gump Strauss Hauer & Feld, LLP | Partner

    Paul is a partner in the Irvine and Los Angeles offices, where his practice focuses on intellectual property (IP) litigation, including patent litigation, trade secret misappropriation, and related licensing and contract disputes. He has been involved in both bench and jury trials in federal district courts, as well as proceedings before various international tribunals, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB) and the U.S. Court of Appeals for the Federal Circuit. Paul has served as a pro bono prosecutor in nearly a dozen criminal matters, including as lead counsel in numerous related jury trials.
  • Stephenson-200 Stephenson, Adam

    Adam R. Stephenson, LTD | Patent Attorney

    Adam is a registered patent attorney in private practice focusing on patent and trademark preparation and prosecution as founder of the firm IPTechLaw which represents clients ranging from the Fortune 500, privately held companies of all sizes, and independent entrepreneurs in a wide range of technical areas.
  • Zinkl, Gregory

    Genetech | Senior Patent Counsel

    Gregory Zinkl, Ph.D. Greg is a cell biologist and registered patent attorney practicing intellectual property law with an emphasis on large-molecule pharmaceuticals and associated technologies. He currently works for Genentech, Inc., as Senior Counsel Specialist, Assistant General Counsel, where he is a member of the Platforms Team in the Technology Practice Group. His current practice includes patent portfolio management and strategy, patent prosecution, IP counseling, due diligence, and transactional matters. Greg is admitted to practice before the United States Patent and Trademark Office, and the Illinois State Bar and California State Bar (the latter as Registered In-House Counsel (RIHC)).
  • Nikhanj square200jpg Nikhanj, Rakhi

    Mueting, Raasch & Gebhardt | Shareholder

    Rakhi Nikhanj is a Shareholder at Mueting Raasch Group in Minneapolis, MN, and is a registered patent attorney with 17 years of experience advocating for her clients ranging from fortune 500 companies to start-up companies and individual inventors. Her patent work spans technical areas such as medical devices, high technology filters, software, material science, acoustics, sensors, and radio frequency and other communication systems.
  • Van Hoven, Joshua

    Van Hoven PC | Founder

    Josh Van Hoven founded Van Hoven PC to represent companies facing challenging competitive issues at the intersection of law and technology. Josh's primary practice areas are strategic patent portfolio development and technology litigation. Josh works with growing technology companies to develop patent portfolios that stand up to investor, litigation, and licensing scrutiny. Josh also represents companies in technology litigation involving patents, trade secrets, and antitrust.
  • Soroush, Ali

    United States Patent and Trademark Office | Primary Patent Examiner (TC1600)/ Assistant Outreach Detailee Silicon Valley Regional Office

    Mr. Soroush has served the USPTO for over 17 years as a patent examiner in the biotechnology area, with special focus on pharmaceuticals, cosmetics, and herbicides. Also, Mr. Soroush contributed to several projects including the development of Global Dossier and the implementation of WIPO standard ST.26 (presentation of nucleotide and amino acid sequence listings using xml). Further, he was on detail with the Office of Solicitor and served as a trainer in the Patent Academy.
  • Miles, Wade

    United States Patent and Trademark Office | Primary Patent Examiner and Assistant Outreach Officer, Silicon Valley Regional Office

    Wade is a Primary Patent Examiner in Technology Center 3700 at the USPTO. He started at the USPTO in 2008, and he is currently serving as an Assistant Outreach Officer for the Silicon Valley Regional Office As an examiner, he examines a wide variety of medical devices for patentability, including stents, lancets, heart valves, and surgical robots. Wade has also served on numerous details within the USPTO, including details with the Patent Trial and Appeal Board, Technical Quality Assurance Shop, and Patent Training Academy. Prior to joining the USPTO, he earned a J.D. from the University of Oregon and a Bachelor’s in Biomedical Engineering from Mississippi State University.
  • Randall_Square Randall, David A.

    Orbit IP | Partner

    David 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.
  • Karlin, Elliot

    Samsung Semiconductor, Inc. | IP Manager

    Elliot Karlin has worked as a patent attorney for 10 years, providing counsel to companies ranging in size from start-ups to leaders in the tech industry. Elliot currently works for Samsung Semiconductor, where he manages the company’s patent portfolio and works closely with inventors to identify subject matter for patenting.
  • Prieto, Violeta

    United States Patent and Trademark Office | Primary Patent Examiner, and Assistant Outreach Coordinator

    Violeta Prieto is a Primary Patent Examiner in the optical measurement and testing area with emphasis in interferometry, spectroscopy, and colorimetry. She recently served in the Patent Training Academy as a Training Assistant and is currently an Assistant Outreach Coordinator for the Western Regional Office, supporting programs for inventors, entrepreneurs, and other communities in the western United States along with K-12 STEM activities. Violeta holds a PhD in Physics from University of Maryland.
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