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Drafting and Prosecuting Patent Applications to Survive a Markman Hearing: Claim Construction Case Studies

Recording of a 90-minute premium CLE video webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Thursday, March 30, 2023

Recorded event now available

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This CLE webinar will guide patent counsel for patent drafting to survive a Markman hearing. The panel will provide claim construction case studies, examining a district court case for do's and don'ts when drafting and prosecuting a patent application. The panel will offer tips and pointers on what to do to minimize the impact of what patent counsel have to say and do in order to get the patent granted.

Description

Patents prepared and prosecuted with future litigation and litigation-related issues in mind are more likely to withstand challenges and provide the protection desired. For example, statements made in a patent application or during prosecution will influence the outcome of a Markman hearing. However, for patent attorneys and agents who have never litigated a patent, it may be difficult to fully appreciate the practical implications of actions taken and statements made in preparing and prosecuting a patent application on the scope of the patent when it is asserted against an accused infringer.

Closely examining district court cases can be the next best thing to give real-life context to the potential impact what is done and said during the patent application drafting and prosecution processes can have on the scope of the claims during the Markman hearing.

Listen as our authoritative panel of patent attorneys conducts claim construction case studies, examining district court cases where the patentee's statements in the application or during prosecution directly impacted the outcome of the Markman hearing. The panel will also offer tips and pointers on how to minimize the impact of what patent counsel have to say and do in order to get the patent granted.

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Outline

  1. Claim construction case studies
  2. Best practices
    1. Clearly defining terms
    2. Clear and concise claim terms
    3. Consistent use of terms
    4. Consider including definitions of claim terms in specification
    5. Use of dependent claims and multiple independent claims of varying scopes

Benefits

The panel will review these and other key issues:

  • How can practitioners draft and prosecute patent applications and claims to survive Markman hearings?
  • What claim drafting strategies can patent counsel employ with the Markman hearing in mind?
  • What steps can counsel take to improve the likelihood that claims will be interpreted as intended?

Faculty

O’Brien, Michelle
Michelle E. O'Brien

Partner
The Marbury Law Group

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in...  |  Read More

Díaz, Roy P.
Roy P. Díaz, PhD, JD

Assistant Vice-President - DIPI International Head of Instrumental Cosmetics & Digital
L’Oréal Research & Innovation USA

Dr. Díaz is the Assistant Vice-President - DIPI International Head of Instrumental Cosmetics & Digital for...  |  Read More

Nichole Valeyko
Nichole Valeyko

Director, Patents
Merck

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 |  Read More

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