Navigating the Patent Prosecution Highway and Other Accelerated Filing Options

Evaluating the Different Options, Weighing the Benefits and Risks, Obtaining Patent Protection

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


Thursday, August 31, 2017 (in 10 days)
1:00pm-2:30pm EDT, 10:00am-11:30am PDT


This CLE webinar will provide guidance to patent counsel on the use of the patent prosecution highway and other ways to fast track examination. The panel will examine the pros and cons of options and will discuss factors to consider when determining whether to pursue accelerated prosecution and which avenue to take. The panel will offer best practices for avoiding common mistakes and obtaining patent protection.

Description

Options are available to patent applicants to obtain quicker resolution of their applications, including the Patent Prosecution Highway (PPH), Track One Prioritized Examination, and First Action Interview.

For example, the PPH allows applicants who have received positive rulings on claims from a participating office to request accelerated prosecution of corresponding claims in another participating office. As a result, the applicant may more quickly obtain a patentability decision in the second office.

Further, the PPH has an overall allowance rate of approximately 81% (and about a 22% first action allowance rate), which is significantly higher than applications following the regular path, which has an allowance rate of about 53%.

Before seeking an accelerated filing, patent applicants and their counsel should consider several factors, including the breadth or narrowness of the claim, the strictness of the office of earlier examination, and how countries treat art and inventions.

Listen as our authoritative panel of patent attorneys examines the patent prosecution highway and other ways to fast track or accelerate examination. The panel will discuss the pros and cons of options for faster prosecution. The panel will also examine factors that applicant’s counsel should consider to determine whether to pursue accelerated prosecution and which avenue to take. The panel will further discuss common mistakes and offer best practices for avoiding those mistakes and obtaining patent protection.

Outline

  1. PPH
    1. Benefits/risks
    2. Eligibility
    3. Documents
    4. PPH examining procedures
    5. Special PPH issues
    6. Decision process
    7. Factors to consider
  2. Track One
  3. Track Two (e.g., normal prosecution)
  4. First action interview
  5. Other avenues to consider

Benefits

The panel will review these and other key issues:

  • What options are available to accelerate a patent prosecution, and what are the pros and cons of each?
  • What factors should patent counsel consider when determining whether seeking accelerated patent protection is the best avenue for prosecution?
  • What are the key considerations for patent counsel drafting applications when accelerated patent protection is anticipated?

Faculty

Ralph G. Fischer, Shareholder
Buchanan Ingersoll & Rooney, Pittsburgh

Mr. Fischer practices in the fields of patent, trademark, copyright and unfair competition law. His work involves a wide range of technical subjects including mechanical, electrical, electronic, e-commerce, biotech, chemical, metallurgical and computer fields. He has obtained and litigated patents on a variety of products including computers, communication systems, business methods, medical devices, and more. He has experience in patent solicitation, licensing, ITC investigations, trademark cancellation and opposition proceedings, and registration of trademarks and copyrights.

Duane A. Stewart, III, Shareholder
Buchanan Ingersoll & Rooney, Pittsburgh

Mr. Stewart integrates complex science and legal matters at a high level. He specializes in explaining complex intellectual property law concepts in a way that is accessible. Mr. Stewart focuses on patent prosecution, portfolio management and litigation; trademark procurement and portfolio management; and analysis and due diligence for transactions including IP. His patent practice includes preparation and prosecution of domestic and foreign utility and design patents in the pharmaceuticals, fragrance, home products and biotechnology fields. Mr. Stewart is the Co-Chair of the firm’s Chemical Practice Group.


Live Webinar

Live Webinar $297.00

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

CLE credits are not available for PR.

*In KS, OH, PA, for more than 1 attendee on the connection you must contact Strafford CLE via email or call 1-800-926-7926 ext. 35 prior to the program for special instructions.


Recordings

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AK, AZ, CA, CO, CT, DE, FL, GA, HI, IA, ID, IL, IN*, KS, KY, LA, ME, MN, MO, MT, NC, ND, NH**, NJ, NM, NV, NY, OH*, OK, OR, PA, SC, TN, TX, UT, VA, VT, WA, WI, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

CLE On-Demand Video $297.00
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Recorded Event

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Strafford is an approved provider and self-study CLE credit is available in most states.

AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

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Webinar

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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

Clearly had right speakers for this seminar.

Greg DeGulis

McMahon DeGulis

The teleconference addressed a highly relevant topic that recurs in my practice. The subject matter was very timely and informative.

Saleem Moghal

Paul Hastings Janofsky & Walker

The seminar tackled a difficult issue that we need to understand better.

Evan Smith

Beazley

or call 1-800-926-7926

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

or call 1-800-926-7926

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