Patent Claims and the Article "A": Only One or More Than One And Other Impactful Words/Punctuation
Best Practices for Preparing and Prosecuting Patent Applications
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on the impact of recent decisions addressing "a" and the implications of these decisions on U.S. patent practice. The panel will offer best practices of fundamentally sound principles to prepare and prosecute a U.S. patent application to avoid careless claim terminology and untoward language in the specification.
Outline
- Analysis of cases where "a" meant "one or more"
- Analysis of cases where "a" meant "one and only one"
- Supreme Court decision and revelation of just how big a deal "a" can be
- Best practices for preparing and prosecuting patent applications, echoing that sometimes it is not most important to write to be understood, but to write in such a way that the author cannot be misunderstood
Benefits
The panel will review these and other high profile issues:
- How can a single word in claim language and specification lead to the demise of U.S. patent rights?
- How do recent decisions impact drafting claims and specifications?
- What steps can counsel take to avoid careless claim terminology and mistakes in the specification?
Faculty
Margo A. Bagley
Asa Griggs Candler Professor of Law
Emory University School of Law
Ms. Bagley is Asa Griggs Candler Professor of Law at Emory University School of Law. She rejoined the Emory faculty in... | Read More
Ms. Bagley is Asa Griggs Candler Professor of Law at Emory University School of Law. She rejoined the Emory faculty in 2016 after a decade at the University of Virginia, School of Law, where she was most recently the Hardy Cross Dillard Professor of Law. Bagley received her JD from Emory, where she was a Robert W. Woodruff Fellow, an editor of the Emory Law Journal, and elected to Order of the Coif. She is a member of the Georgia bar and is licensed to practice before the US Patent and Trademark Office. Bagley worked as an associate with Smith, Gambrell & Russell, LLP and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP before becoming an assistant professor of law at Emory University and then associate professor. She was a visiting professor of law at Washington & Lee University School of Law in fall 2001 and at the University of Virginia School of Law in fall 2005, after which she joined the University of Virginia faculty in 2006. She is a faculty lecturer with the Munich Intellectual Property Law Center at the Max Planck Institute in Germany, and also has taught International Patent Law and related courses in China, Cuba, Israel, and Singapore.
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Sarah Hooson
Director, Legal
Merck Sharp & Dohme
Ms. Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ. Her present responsibilities include... | Read More
Ms. Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ. Her present responsibilities include patent preparation, prosecution, and due diligence support for small molecule, vaccine, and antibody programs in human and animal health. She gained her initial legal patent experience while working at GlaxoSmithKline (GSK). She received her bachelor’s degree in Biomedical Engineering from Georgia Institute of Technology, and her J.D. from Delaware Law School - Widener University. She gained considerable bio-pharmaceutical research and development and vaccine process development experience while working as an engineer at Merck, GSK, and MedImmune.
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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
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. Mr. Irving has served as lead counsel in many patent interferences.
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Krista Kostiew
Assistant General Counsel-Patents
Unilever
Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry... | Read More
Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry including beauty and personal care products and compositions (bars, liquids, sanitizers, shampoos, conditioners, etc.). She is skilled in Patent Prosecution, Freedom to Operate (FTO), Patent Portfolio Analysis, Patent Law, Technology Transfer, NDA/CDAs, and other aspects of Intellectual Property.
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