Overcoming Sect. 102 Rejections: Leveraging Recent Decisions and USPTO Guidance

*** This program has been cancelled ***

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


Thursday, August 17, 2017
1:00pm-2:30pm EDT, 10:00am-11:30am PDT


This CLE webinar will provide guidance for patent counsel for overcoming §102 rejections. The panel will review recent case law and USPTO guidance and offer strategies to address §102 rejections.

Description

Novelty is one of the hurdles for patent applicants in securing a patent on inventions. Section 102 rejections are the second most-issued rejection basis at the USPTO regardless of technology. Applicants and their counsel may respond to rejections in several ways and should carefully consider which option will most likely result in overcoming the rejections and resulting in a patent of optimal enforceability.

In a §102 rejection, what the claim says and how it is construed matter. Counsel should base arguments on the language of the claim, keeping in mind how it is likely to be construed. Doing otherwise may prompt the examiner to consider a §112 rejection for failing to claim the subject matter the applicant regards as his invention and could also result in subsequent enforcement problems. If it is necessary to argue other language, amending the claim to incorporate that language may be prudent.

Among the avenues counsel can take to respond to a rejection are a Request for Continued Examination (RCE), an interview, and an appeal. The most popular response—RCEs—is not necessarily the most effective.

Applicants can anticipate more rejections going forward. Those who receive a §102 rejection and their counsel must plan and carefully implement well thought out strategies for overcoming the rejections and enhancing future enforcement.

Listen as our authoritative panel of patent attorneys discusses §102 rejections, how applicants respond to them, and how successful those responses are. The panel will examine how patent examiners, the Patent Trial and Appeals Board (PTAB), and the courts have treated §102 rejections and the USPTO’s guidance on §102 rejections. The panel will also discuss the challenges and will offer best practices for patent counsel on how to address and overcome §102 rejections in patent applications.

Outline

  1. Current guidance
    1. Lessons learned from recent court decisions
    2. USPTO guidance
  2. Strategies for overcoming §102 rejections
    1. Identifying and arguing deficiencies in examiner’s characterization
    2. Examiner interviews
    3. RCEs
    4. Addressing rationale behind rejection
    5. Amending claims
    6. Improved drafting to avoid rejections

Benefits

The panel will review these and other key issues:

  • What, if any, evidentiary support should counsel provide to bolster its assertion of novelty?
  • What strategies can patent counsel implement to overcome §102 rejections?
  • How can patent counsel guide applicants, for example, during the drafting process, in reducing the likelihood of a §102 rejection?

Faculty

Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Anthony M. Gutowski, Partner
Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations. 

Michael V. Young Sr., Esq.
Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

Mr. Young practices patent law with an emphasis on patent portfolio management, client counseling, U.S. district court litigation, and post-grant proceedings. He also represents clients in the U.S. Court of Appeals for the Federal Circuit in cases stemming from court actions and post-grant proceedings. He has worked on inter partes review (IPR) and covered business method (CBM) post-grant review (PGR) proceedings. He develops offensive and defensive strategies for multiple, related proceedings; prepares and manages the preparation of written submissions; takes and defends technical expert depositions; and argues discovery and substantive issues.


Live Webinar

Live Webinar $297.00

Add a colleague on the same connection in the same room for only $97.00 in the shopping cart or by calling customer service.

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

CLE On-Demand - Streaming Video

Includes recorded streaming video of full program plus PDF handouts.

On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.

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
Available 48 hours after the live event

How does this work?


Recorded Event

Includes full event recording plus handouts (available after live webinar).

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.)

Strafford will process CLE credit for one person on each recording.

Additional copies of a recording can be purchased at a discount. Please call Strafford Customer Service toll-free at 1-800-926-7926 ext 10 or email customerservice@straffordpub.com to place your order.

Recorded Webinar Download $297.00
Available 48 hours after the live event

How does this work?

Recorded Audio Download (MP3) $297.00
Available 24 hours after the live event

How does this work?

DVD (Slide Presentation with Audio) $297.00 plus $9.45 S&H
Available ten business days after the live event

How does this work?


Registration Plus Recorded Event

Best value!

Live Webinar & Webinar Download $394.00

Recorded Webinar Download Only $97.00 with Registration/Webinar Combo

Live Webinar & Audio Download $394.00

Recorded Audio Download (MP3) Only $97.00 with Registration/MP3 Combo

Live Webinar & DVD $394.00 plus $9.45 S&H

DVD (Slide Presentation with Audio) Only $97.00 with Registration/DVD Combo


Webinar

Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

CLE Credits By State

See CLE State Map >

Customer Reviews

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

Michael Gray

Kohler

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

David H. Vance

Vance Intellectual Property

Very concise - provided what was needed, yet also included many examples, thoughts and ideas.

Ron Keith

Skilled Care

I appreciated that the subject matter of the program was presented in an understandable, concise and organized manner.
 

Stephen J. Bozarth

Dean Mead et al

The seminar provided good practical examples and advice plus good Q&A.

Don Weinbren

Trenam Kemker

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

Our Guarantee

Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.