Patent Claim and Specification Drafting and Prosecution

Avoiding Traps That Lead to Royalty Free Licensing of Patented Technology

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


Conducted on Tuesday, January 29, 2019

Recorded event now available

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Program Materials

This CLE webinar will guide patent counsel on the impact of case law on daily U.S. patent practice. The panel will offer best practices of sound principles to prepare and prosecute patent applications to avoid traps for the unwary or careless claim terminology and untoward language in the specification. The panel will also give real-world examples of "worst" practices that have led to the destruction of U.S. patent rights.

Description

Practitioners strive to secure valid and enforceable U.S. patent claims that will be construed to have the scope intended by the client, whether in litigation or before the PTAB. History reveals not infrequent royalty-free licensing of patents resulting from mistakes in the claims or in the specification as used to interpret the clams. Are these mistakes the result of carelessness? Of ignorance? Some of these decisions have turned against the patent owner based on misusing some of the smallest and seemingly most innocuous of words, symbols, and expressions in the English language, such as:

  • "to" instead of "at"
  • "a"
  • a misplaced comma
  • "about"
  • "is"
  • "the invention"
  • patent profanity, such as, e.g., critical, necessary, essential, and majority
  • "at least one of"
  • relative terms, such as, e.g., viscosity, glass transition temperature, near, and close

It is not just claim language that can lead to the demise of U.S. patent rights; Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc) emphasizes the place of the specification at the heart of claim construction analysis. See also Allen Engineering Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002). If fatal mistakes are made in the claims and specification, it doesn’t matter which standard the Examiner, PTAB, or the courts use to interpret the claims.

The more care a practitioner takes throughout prosecution, from the initial drafting of the specification to the language of the claims, to the winning arguments to the examiner, the better the likelihood the patent has of being construed as the patentee hopes, and of withstanding any challenges.

Listen as our authoritative panel of patent attorneys discusses the impact of Federal Circuit and PTAB caselaw on your daily U.S. practice. The panel will offer best practices of fundamentally sound principles to prepare and prosecute a U.S. patent application to avoid traps for the unwary or careless claim terminology and untoward language in the specification. The panel will also reveal several real-world examples of "worst" practices that have led to the destruction of U.S. patent rights.

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Outline

  1. Impact of Federal Circuit and PTAB case law on daily U.S. patent practice
    1. Drafting claims
    2. Drafting specifications
    3. Litigating claims
    4. Defending against patent suits
    5. Licensing patents
    6. Evaluating the claims of third-party U.S. patents
  2. Best practices of fundamentally sound principles to prepare and prosecute a U.S. patent application
    1. Avoiding traps for the unwary
    2. Avoiding careless claim terminology and untoward language in the specification
  3. Real-world examples of "worst" practices that have led to the destruction of U.S. patent rights

Benefits

The panel will review these and other high profile issues:

  • How can a single word in claim language and/or specification lead to the demise of U.S. patent rights?
  • How do Federal Circuit and PTAB decisions impact drafting claims and specifications?
  • What steps can counsel take to avoid careless claim terminology and careless mistakes in the specification?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Feldstein, Mark
Mark J. Feldstein, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and...  |  Read More

Gutowski, Anthony
Anthony M. Gutowski

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent...  |  Read More

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