Dunes™ CLE in Las Vegas

Patent Drafting in view of Phillips v. AWH - Wesley L. Austin

This presentation will discuss the Federal Circuit’s en banc decision of Phillips v. AWH, which issued on July 12, 2005. Patent preparation and prosecution techniques will be examined in view of Phillips. Topics include whether the detailed description should include definitions and what kind of definitions, strategies for using multiple embodiments in the specification and drawings, and drafting dependent claims to broaden the independent claims. The importance of dictionaries and their role after Phillips will be covered, which will include the specific role of dictionaries versus the specification. Topics such as technical versus general dictionaries, a single dictionary definition and multiple dictionary definitions will also be presented.

Conflicts of Interest in Patent Preparation and Prosecution - Robert Ryan Morishita

In Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), the court opined that a patent attorney places himself in a position “fraught with possible conflict of interest” when representing “two clients seeking patents in closely related technologies.” However, the court expressly left open the question of whether there was, in fact, a conflict under the particular circumstances of the case and whether that conflict of interest caused the attorney to choose between the attorney’s obligations to the PTO and his obligations to his clients. This presentation seeks to outline the conflicts rules with a particular focus on the conflicts of interest that arise when preparing and prosecuting patent applications.

Client Relations in Preparation and Prosecution - Panel Discussion

Costs in preparing patent applications and pendency times for prosecuting patent applications are ever increasing. This leads to a long relationship between the client and attorney. This panel discussion will be directed to the practical side of preparation and prosecution. The panel will discuss techniques in keeping clients and their attorneys happy. Topics include educating clients in the prosecution process, setting fees and costs, and keeping clients apprised of the fees and costs to be incurred.

Retroactive Prosecution History: Controlling Your Claim Construction - Mark A. Miller

The Federal Circuit's decision in Microsoft Corp. v. Multi-Tech Systems, Inc., 357 F.3d 1340 (Fed. Cir. 2004) made it clear that the prosecution history of a continuation application occurring after the parent application has issued can be used to narrow and interpret the claims of the already issued patent. While this can have detrimental effects on the scope of the earlier-issued patent, it also provides a tool for clarifying and ensuring the claim construction you need and intend. This presentation will discuss the Microsoft case and how that holding can be used to secure your intended claim construction.

Effective Use of Patent Application Publication – Robert Ryan Morishita

Although many patent attorneys dislike the US’s adoption of pre-grant publication of patent applications, the patent application publication has created unexpected opportunities for inventors and patent holders vis a vis competitors. This presentation examines strategies for managing whether and, if so, when a patent application is published to further the client’s objectives. This presentation also reviews strategies for dealing with competitors’ published patent applications.

This panel discussion will be directed to Examiner interviews. The panel, all practicing patent attorneys, will discuss topics including considerations in the decision to interview a case, whether to interview by telephone or in-person, the timing of the interview, disadvantages and advantages of client participation in the interview, and techniques for preparing for, conducting, and following-up the interview.

Appealing to the Board of Patent Appeals and Interferences - Thomas M. Hardman

A patent applicant has a statutory right to appeal to the Board of Patent Appeals and Interferences (BPAI) when any of the applicant’s “claims have been twice rejected.” 35 U.S.C. § 134(a). This presentation will explore various issues related to appealing prior art-based claim rejections to the BPAI, including various strategies for determining whether it is in the applicant’s best interests to file an appeal or to continue prosecution before the Examiner. Possible arguments, especially legal arguments, that may be effective in overcoming prior art-based rejections before the BPAI will also be discussed. The presentation will also include a discussion of the PTO’s Pre-Appeal Brief Conference Pilot Program.

The Year in Review - Dennis Crouch

Over the past year (April '05 - April '06), the Court of Appeals for the Federal Circuit has continued to provide new insight into the patenting process and the role of patent attorneys and agents. This one-hour interactive discussion will highlight these important cases and relate them to your prosecution practice. Topics include a new developments in the areas of experimental use, drafting toward international infringement, utility under Section 101, inequitable conduct, prosecution history estoppel and laches, on-sale and public use bars, indefiniteness, vitiation, prior use, and dedication to the public.

Adjourn (end of Day 2)