PTO Proposed Rules for Continuation Practice

CD of Live 90-Minute Telephone Conference with an Interactive Q&A Session Conducted on April 27, 2006 Now available on CD

The U.S. Patent and Trademark Office (PTO) recently introduced a proposed rule package, "Changes to Practice for Continuing Applications," that would place stringent limits on patent application prosecution.

Some argue that the change is necessary to prevent the practice of using multiple continuations to manipulate the patent system.

The debate over these changes has been lively -- with impassioned reaction by inventors, patent owners and practitioners. The PTO is accepting comments on the proposed rules until May 3.

Listen as our authoritative panelists review the proposed rule changes and their likely impact, if adopted as proposed, and offer strategies for patent applicants preparing to prosecute patents.

Frederic M. Meeker (Moderator), Partner, Banner & Witcoff, Washington, DC, concentrates on 337 investigations at the U.S. International Trade Commission, patent counseling, and patent application preparation and prosecution. An adjunct professor at George Mason University School of Law, he previously worked as a software programmer.

Allen E. Hoover, Partner, Banner & Witcoff, Chicago, has broad experience in IP law. He has handled patent infringement lawsuits in a wide range of technologies. He conducts licensing negotiations on behalf of clients and provides counseling on complex IP matters.

Kenneth H. Ohriner, Partner, Perkins Coie, Santa Monica, specializes in patent procurement and patent litigation. He has written, filed and prosecuted over 300 U.S. and foreign patent applications and has handled all aspects of patent practice, including appeals, reexaminations, reissues, petitions and complex prosecution.

Seth A. Watkins, Special Counsel, Steptoe & Johnson, Washington, D.C., practices in the firm's Intellectual Property and Litigation groups. He concentrates on IP strategic counseling, litigation, prosecution, and agreement negotiation with an emphasis on patents. He earned his PhD in Mechanical Engineering from Duke University and served on its faculty.

The panelists address these and other key questions:

• How do the proposed rules limit continuations and what are the exceptions?
• What is the PTO's reasoning for the changes -- and how has the IP community reacted?
• How can patent applicants plan now for the adoption of the proposed rules?

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