Patent Claim and Specification Drafting and Prosecution

Avoiding Traps That Lead to Royalty Free Licensing of Patented Technology

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


Conducted on Thursday, March 11, 2021

Recorded event now available

or call 1-800-926-7926
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 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 used to interpret the claims. 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, e.g., critical, necessary, essential, and majority,
  • "at least one of,"
  • relative terms, e.g., viscosity, glass transition temperature, near, and close.

Other times it is because the subject matter was disclosed but not claimed. Or the drafter did not remain vigilant about maintaining a tight priority chain in the specification. Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc) emphasizes the specification at the heart of claim construction analysis. 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 telling the invention story in the initial drafting of the specification to the language of the claims to the winning arguments to the examiner--the higher the likelihood that the patent will be construed as the patentee desires and will withstand any challenges.

Listen as our authoritative panel of patent attorneys discusses the impact of Federal Circuit and PTAB case law 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.

READ MORE

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

Burgy, Adriana
Adriana L. Burgy

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  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

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

Kostiew, Krista
Krista Kostiew
Senior Patent Counsel/Regional Patent Manager
Unilever

Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include program handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

Download