Report of the Economic Survey
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San Jose, CA, 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 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.
Program Agenda & Schedule
Wednesday, February 7 (8:30 am - 5:30 pm)
Application Preparation - Including:
- Opening Remarks
- Initial ‘Inventor’ Interview and Invention Disclosure
- Patent Searching and Opinions
- Application Drafting and Provisional Applications
- Overview of Design Patents
- Filing Formalities
- Afternoon Claims Drafting Workshops
- 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
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.
AIPLA Regular Members: $495
AIPLA Solo Members: $395
AIPLA Junior and IP Paralegal Members: $295
AIPLA Government, Academic, & Student Members: $99
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.
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
Perkins Coie | PartnerJordan 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.
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.
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.
Holland & Hart | PartnerPhil 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.
Schwegman Lundberg & Woessner, PA | PrincipalLucas 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, Thomas L.
The Marbury Law Group, PLLC | PartnerTom 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.
Donaldson | Intellectual Property CounselAndy 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.
Abbott Laboratories | Senior IP CounselStephanie 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, Rochelle "Rocky"
Lieberman & Brandsdorfer, LLC | Founding MemberRochelle 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.
Waterstone Edge | Attorney & FounderRRobert 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.
Schwegman Lundberg & Woessner | PrincipalRicardo 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.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | PartnerYelena 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.
Duane Morris LLP | PartnerVicki 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 | PartnerMs. 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 | PartnerStefan 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 Intellectual Property Law | Founder and Principal AttorneyMargaret 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.
Crowell & Moring LLP | PartnerMarc 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.
Shumaker & Sieffert, P.A | PartnerJennifer 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 | AssociateAs 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.
Knobbe Martens | PartnerMauricio 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.
Merck & Co., Inc. | Director - IP Legal GroupNichole 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.
Akin Gump | PartnerBrandon 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 | PartnerPaul 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.
Adam R. Stephenson, LTD | Patent AttorneyAdam 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.
Genetech | Senior Patent CounselGregory 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)).
Mueting, Raasch & Gebhardt | ShareholderRakhi 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 | FounderJosh 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.
United States Patent and Trademark Office | Primary Patent Examiner (TC1600)/ Assistant Outreach Detailee Silicon Valley Regional OfficeMr. 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.
United States Patent and Trademark Office | Primary Patent Examiner and Assistant Outreach Officer, Silicon Valley Regional OfficeWade 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, David A.
Orbit IP | PartnerDavid 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.
Samsung Semiconductor, Inc. | IP ManagerElliot 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.
United States Patent and Trademark Office | Primary Patent Examiner, and Assistant Outreach CoordinatorVioleta 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.