Model Patent Prosecution Templates
AIPLA's Patent Law Committee maintains a collection of sample documents related to day-to-day patent prosecution. These documents are exemplary and may not be ideal for every situation. Use them at your own risk.*
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Model Response Shells:
Each of these documents contains a comprehensive shell document that can be used to formulate a response to 35 U.S.C. 112, 102, 103, or 101 rejections made by a patent examiner during prosecution.
Model Appeal Brief: (Doc) (PDF)
This document contains the overall structure of appeal brief with a section for drafting responses to point out error in rejections made in 35 U.S.C. 112, 102, 103, 101, and obviousness-type double patenting rejections. The model appeal brief includes summaries of the relevant portions of the PTAB’s designated informative and precedential decisions applicable to ex parte appeals along with associated Federal Circuit case law.
Model Reply Brief: (Doc) (PDF)
This document contains the overall structure of a reply brief along with relevant case law summaries to use for handling new grounds of rejection in an Examiner’s Answer.
*Nothing included in these sample documents or elsewhere on this site should be considered legal advise on the part of AIPLA or any of its members.
Location
Credits
Up to 360 Minutes of CLE
Registration
Join us for the 2026 Virtual Corporate Practice Institute!
Presented by the AIPLA Corporate Practice Committee
A two half-day online CLE program designed for corporate in-house counsel, including attorneys and patent agents.
The program covers a variety of topics related to intellectual property law, including attorney-client privilege, university technology transfer, trade secrets, data privacy, and working with in-house and product counsel.
The Corporate Practice Institute provides in-depth insight for in-house corporate counsel and agents to learn about wide ranging legal issues affecting their practice from experienced practitioners. It is designed for experienced in-house attorneys and new in-house attorneys learning to manage new corporate environments and challenges not taught in law schools or private practice. The Institute also helps private practice attorneys, especially associates, prepare for potential in-house career moves. The program also provides valuable networking opportunities to connect with each other and learn from each other's experiences.
Program Agenda:
Tuesday, January 13
12:00 - 1:00 pm: In-House Ethical Challenges - In-house legal situations present unique and sometimes complicated ethical challenges. This talk will center around common situations that present conflicts of interest and ethical challenges in an in-house setting. Presented by: Patrick Austin, Woods Rogers Vandeventer Black PLC; Merri Baldwin, Rogers Joseph O'Donnell, Jennifer Burdman, SIMIP Inc., Moderated by: Kathleen Ranney
BREAK
1:30 - 2:30 pm: Working with Universities, including contracts and working with non-attorney managers -Leading corporations need access to unique technical expertise and resources found at universities for cutting-edge technology development. Patent counsel at leading institutions will discuss the legal aspects of university technology transfer mechanics, how to avoid common pitfalls that slow negotiations, and what companies can do to build lasting strategic partnerships. Presented by: Dev Narasimhan, UW CoMotion; Adam Litteken, UIUC
BREAK
3:00 - 4:00 pm: Trade Secrets and Confidential Information - Contracting Best Practices in Research Collaborations - A businesses' most valuable IP can often comprise trade secrets, which can complicate research collaboration partnerships - what comprises trade secrets vs know-how, and which entity owns the new IP? This talk will discuss several scenarios involving partnerships with third parties that implicate trade secret issues and how to best contract with those issues in mind. Presented by: Barbara A. Fiacco, Foley Hoag; Kevin E. Noonan, PhD, McDonnell Boehnen Hulbert & Berghoff; & Eric Silverman, Genentech, Inc.
4:00 - 5:00 pm: Networking Online Breakout Groups
Tuesday, January 20
12:00 - 1:00 pm: Updates on Data Privacy Law & Best Practices - Data privacy has established itself as a crucial component of any organization's success. This talk will examine trends and best practices for data privacy from both internal and external facing viewpoints. Presented by: Michael Wrobel, UIUC; and Susan Rohol, Willkie Farr & Gallagher LLP; Shoshana Gillers, TransUnion; Kat Robison, Nike, Inc.
BREAK
1:30 - 2:30 pm: IP Portfolio Partnerships - Balancing In-House and Outside Counsel Resources - Managing a growing and diverse patent portfolio benefits from outside counsel expertise, but company brass often want to keep costs down. This talk will discuss how to best allocate resources between in-house IP professionals and outside IP counsel in the pursuit of strong patent and trademark portfolios. Presented by: Sabing Lee & David Schmidt Ph.D, Knobbe Martens
BREAK
3:00 - 4:00 pm: Diversity in Innovation - 2025 In Review - This talk will recap the major developments in diversity-related initiatives in 2025, examine significant diversity-related cases, and discuss the potential impact of diversity on innovation in 2026. Presented by: Alex Barnett, Dani Hoyer-McWaters, and Emily Leiter of Alston Bird.
4:00 - 5:00 pm: Networking - Online Breakout Groups
as of December 17, 2025 - subject to change
Registration Rates:
AIPLA Members
AIPLA Regular-Corporate Practitioner Member: $99
AIPLA Regular Member: $295
AIPLA Junior Member: $99
AIPLA Government Member: $99
AIPLA Student/Academic Member: $45
Non-Member Corporate Counsel: $495 (Online registration not available - Click Here to register as a non-member in-house counsel)
Non-Corporate Counsel - Non-Member: $725
Registration includes access to all sessions on-demand after the live event!
Speakers
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Fiacco, Barbara A.
Foley Hoag, LLP | Co-Chair, Patent Litigation Practice
Barbara Fiacco is a Partner, co-chair of the Intellectual Property Department and co-chair of the Patent, Trade Secrets, and Related Rights Litigation Practice at Foley Hoag LLP. In her practice, Barbara handles complex intellectual property and business disputes in the life sciences industry. She has successfully litigated patent, trade secret, and inventorship disputes for global pharmaceutical and biotechnology companies, medical device manufacturers and research institutions. -
Silverman, Eric E.
Genentech, Inc. | Senior IP Attorney
Eric E. Silverman, PhD has over twenty years of intellectual property experience spanning a wide range of industries and technologies. Eric started his IP career as a patent examiner at the USPTO, where he became a primary examiner of patent applications in technologies including pharmaceutical formulations, drug delivery, medical devices, implants, and cosmetics. He then spent several years in large international law firms where his practice included IP litigation, prosecution, and due diligence in technologies such as pharmaceuticals, medical devices, solar power, petrochemicals, oil and gas, and ceramics. -
Noonan, Kevin
McDonnell Boehnen Hulbert & Berghoff LLP | Partner
Kevin E. Noonan is co-Chair of MBHB’s Biotechnology and Pharmaceuticals Practice Group. Dr. Noonan is an experienced patent lawyer, molecular biologist and renowned thought leader in biotechnology and pharmaceutical patent law. Over the past 30 years, he has counseled some of the largest biotechnology and pharmaceutical companies in the world on intellectual property issues. -
Wrobel, Michael J.
University of Illinois
Michael is an IP attorney with over 15 years of experience counseling clients on patents, trademarks, copyrights, trade secrets, licensing, and transactions both as outside and in-house counsel. Michael currently serves as a member of the Privacy Team at the University of Illinois, where he advises on global privacy, data protection, and AI governance. -
Litteken, Adam
University of Illinois | Patent Coordinator
Adam is the Patent Coordinator at the University of Illinois, where he helps turn groundbreaking research into protected intellectual property. He manages patent preparation and prosecution for innovations in engineering, computer science, and the physical sciences, and works closely with licensing teams to make sure IP terms align with commercialization goals. Adam also supports entrepreneurial programs on campus and even serves as a judge for startup competitions. -
Rohol, Susan
Willkie Farr & Gallagher LLP | Partner
Susan Rohol is a partner in Willkie's Privacy, Cybersecurity & Data Strategy and AI & Emerging Technologies groups and is based in Los Angeles. Susan's practice is focused on advising clients on cutting-edge issues spanning privacy, cybersecurity, artificial intelligence, content moderation, intellectual property, regulatory investigations and global government affairs. -
Austin, Patrick
Woods Rogers | Counsel
Patrick Austin is Counsel at Woods Rogers specializing in cybersecurity, data privacy, and AI governance issues. His clients span industries such as banking, healthcare, manufacturing, high-tech, and energy. Patrick helps clients navigate complex and novel regulatory compliance issues associated with the General Data Protection Regulation (GDPR), California Consumer Privacy Act (CCPA), and other information technology laws and frameworks. -
Baldwin, Merri
Rogers Joseph O'Donnell | Shareholder
Merri Baldwin is a shareholder at Rogers Joseph O’Donnell in San Francisco, where her practice focuses on attorney liability and commercial litigation. She handles claims of legal malpractice and breach of fiduciary duty, as well as motions to disqualify and for sanctions. She regularly counsels lawyers and law firms on legal ethics and law practice management issues. She represents attorneys in disciplinary matters before the State Bar of California, and has extensive experience handling attorney-client fee disputes. -
Hoyer McWaters, Danielle
Alston & Bird | Associate
Danielle Hoyer McWaters is an associate in Alston & Bird’s Labor & Employment Practice Group. Dani focuses her practice on a wide variety of employment and commercial litigation matters, including contract disputes, workplace investigations, discrimination lawsuits, and collective bargaining agreement negotiations. Her practice also includes routinely counseling clients in a variety of industries on employment actions, policies, and practices; separation agreements; and compliance with federal and state laws. -
Ranney, Kathleen A.
Attorney
Kathleen has experience as a biotechnology IP attorney in the pharmaceutical industry, and has both in-house and law firm experience. Prior to practicing law, Kathleen started her career as a bench scientist (Molecular biology) including experience at Pfizer Inc. Kathleen has an Honor’s Biology degree from University of Illinois, Champaign-Urbana. She has an M.S. in Biology from University of Oregon, and a J.D. from Chicago-Kent College of Law. -
Gillers, Shoshana
TransUnion | Head of US Compliance and Global Chief Privacy Officer
Shoshana Gillers serves as the Head of US Compliance and Global Chief Privacy Officer at TransUnion. She leads a team of US compliance professionals and global privacy analysts, and oversees compliance with US law and global privacy laws across TransUnion’s global footprint. Shana joined TransUnion in 2019. Prior to joining TransUnion, Shana served as a data privacy attorney at JPMorgan Chase, as a federal prosecutor in the Northern District of Illinois, and as a litigator with WilmerHale. -
Leiter, Emily
Alston & Bird | Associate
Emily Leiter is an associate in Alston & Bird’s Labor & Employment Practice Group. She has experience handling a range of complex commercial matters, with a focus on employment litigation, arbitration, union negotiations, contract drafting, and compliance counseling. Before joining the firm, Emily interned with the general counsel of an impact litigation non-profit and assisted with a range of labor and employment matters and compliance reviews. -
Narasimhan, Dev
Patent Attorney
Dev Narasimhan is a registered patent attorney (70,051) with Bachelors and Masters degrees in Biomedical Engineering, specializing in Biomaterials and Cell and Tissue Engineering. Dev also has extensive experience as an in-house attorney, where he worked with inventors and stakeholders to obtain global patent protection and counseled on patent matters. -
Burdman, Jennifer
Sauvegarder Investment Management | Managing Director
Jennifer Burdman is Managing Director at Sauvegarder Investment Management, focused on intellectual property-based financing, investment and monetization opportunities. She is an IP strategist, former executive at biotechnology companies, and former partner in an international law firm. In her prior roles as Chief Intellectual Property Officer at a number of biotech startups, Ms. Burdman was the lead IP negotiator on $1.5B of equity investment and royalties in AI/ML drug discovery technology areas. -
Robison, Kat
Nike, Inc. | Director, Assistant General Counsel, Digital Policy & Privacy
Kat Robison considers herself a privacy nerd who loves a good challenge. Kat started at Nike in 2015 as privacy counsel, focusing on privacy issues in the enterprise and sports research spaces, including the use of artificial intelligence, and also led the privacy program team for the company. In 2022, Kat transitioned to the Government & Public Affairs global policy team, as the subject matter expert in data protection, cybersecurity, artificial intelligence, and digital marketing. In this role Kat partnered across the enterprise to effectively advise on proposed legislation, rulemaking and related actions in these subject matter areas globally. Kat is currently transitioning to a new hybrid role between public policy and legal, focusing on privacy, AI, cybersecurity and digital marketing. This role will enable her to focus on both proactive policy work and bringing Nike’s compliance strategy to life.
