Leveraging USPTO Examiner Count System: Efficiently Prosecuting Patents, Lowering Prosecution Costs

A live 90-minute CLE webinar with interactive Q&A


Thursday, November 9, 2017
1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, October 13, 2017


This CLE webinar will provide guidance on leveraging the United States Patent & Trademark Office (USPTO) Examiner Count System to prosecute patents more effectively. The panel will provide insight into the count system and offer strategies for interacting with patent examiners.

Description

The USPTO uses a production-based system made up of “counts” to manage the workload of patent examiners. Examiners accrue counts by completing different tasks in the examination process. The type of action and the timing of those actions are factors in determining an examiner’s “counts.”

Since examiners are expected to meet quotas for production, during certain times of the year practitioners see an increase in examiner activity, e.g., at the end of each quarter. Understanding the USPTO’s inner workings allows patent practitioners to efficiently prosecute patents.

Listen as our authoritative panel of patent attorneys offers insights and in-depth understanding of the Examiner Count System. The panel, which includes former patent examiners, will discuss the Examiner Count System and provide guidance to maneuver through the system, including strategies for interacting with examiners. The panel will offer guidance on current USPTO programs and initiatives and how to leverage them.

Outline

  1. Examiner Count System
  2. Guidance from former examiners to leverage system
  3. Strategies on interacting with examiners
  4. USPTO programs and initiatives

Benefits

The panel will review these and other key issues:

  • What impact does the number of claims in the application have on the quality of examination in the first office action?
  • How can patent counsel use the incentives of the count system to the client’s advantage?
  • How and when should patent counsel interact with examiners for effective and efficient prosecution?

Faculty

Adriana L. Burgy, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. From a patent prosecution perspective, she has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios.

Christopher C. Johns, Esq.
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Johns maintains a diverse patent practice, including drafting and prosecuting patent applications related to electronics, software, telecommunications, and business methods; providing client counseling and portfolio management; and handling post-grant proceedings including inter partes review and covered business methods. He also provides freedom-to-operate opinions and has assisted on district court litigations related to telecommunications, computer software, and mechanical devices. Before joining Finnegan, he served as a patent examiner at the U.S. Patent and Trademark Office (USPTO) for nearly five years.

Kai Rajan
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Rajan practices patent litigation and prosecution for a wide range of clients, from startups to established companies. His patent prosecution practice focuses on drafting and prosecuting patent applications in a broad range of technologies, including electrical and computer technologies, healthcare IT software and systems, business methods, and mechanical technologies. He also focuses on the IP issues of emerging technologies such as additive manufacturing, also known as 3D printing.

Stephanie Sanders, Atty
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Ms. Sanders specializes in computer and electrical technologies. Her experience includes handling all aspects of patent prosecution in the U.S. and before patent offices abroad. She has filed and prosecuted applications in various technical spaces, including software, Internet technologies, social media, consumer electronics (e.g., smart phones), digital imaging processing, and business methods. She has also participated in patent litigation, including matters in District Court and before the U.S. International Trade Commission. Prior to becoming an attorney, she was a Patent Examiner in the computer processor art at the U.S. Patent and Trademark Office.


Live Webinar

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This webinar is eligible for at least 1.5 general CLE credits.

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Customer Reviews

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray

Kohler

I especially appreciated the level of detail provided and I thought that the complexity was spot on.

Lauren Anderson

Baker Donelson

The webinar was very easy to use and I liked that the speakers were very knowledgeable.

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Very nice job! The program was well coordinated and professionally done with knowledgeable presenters.

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Patent Law Advisory Board

Charles S. Baker

Partner

Locke Lord

David S. Bloch

Partner

Winston & Strawn

Irah H. Donner

Partner

Manatt

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick

Partner

Duane Morris

David Segal

Senior IP Counsel

Intel

Astrid R. Spain

Partner

Jones Day

Mark P. Wine

Partner

Orrick

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