Approaches to Withstand USPTO Obviousness Rejections and Attacks on Patent Validity

*** America Invents Act changes when obviousness is determined. ***

A live 90-minute CLE webinar/teleconference with interactive Q&A
Sponsored by the Legal Publishing Group of Strafford Publications
Tuesday, January 31, 2012 ~ 1:00pm-2:30pm EST
Price: $297

Please note: You will be taken to the Strafford website to complete your order.

This CLE webinar will provide patent counsel guidance on the changes brought by the America Invents Act, a review of the USPTO’s post-KSR guidelines and how the courts and USPTO are applying the obviousness standard. The panel will outline best practices to avoid obviousness rejections and defend patent validity.

Description

Analyzing patent obviousness hinges on the America Invents Act (AIA), the Supreme Court’s KSR v. Teleflex decision and the USPTO guideline updates. Under AIA, obviousness is measured at the time the patent application is filed instead of when the claimed invention was conceived or reduced to practice.

As the obviousness standard evolves, how the courts and the USPTO Board of Appeals are applying the standard since the KSR decision and under the USPTO guidelines and the AIA offers patent counsel insights in defending patent validity.

The lessons from these rulings can also guide patent counsel when preparing and prosecuting patents to withstand obviousness rejections and attacks on validity.

Listen as our authoritative panel of patent attorneys examines the obviousness standard and the many recent changes that impact it, outlines steps that companies and counsel should take to withstand obviousness rejections, and offers best practices for defending against obviousness attacks in litigation.

Outline

• Obviousness standard for patents
  1. America Invents Act
  2. KSR v. Teleflex
  3. Application of Graham v. John Deere factors
  4. Updated USPTO examiner guidelines
• Treatment post-KSR
  1. In the courts
  2. In the USPTO
• Patent prosecution post-KSR
  1. Responding to rejections
  2. Responding to attacks on validity

Benefits

The panel will review these and other key questions:

• How will patent reform and the AIA impact the application of the obviousness standard?
• Under what circumstances has the obvious-to-try standard supported a finding of obviousness—and when has it worked to nullify such a finding?
• What are the steps that patent applicants can take to stand up to obviousness rejections?

Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Paul Davis, Partner
Goodwin Procter, Menlo Park, Calif.
He has a strong patent background in the medical device, electrical engineering, photonics, networking, e-commerce and telecommunication industries, focusing primarily on U.S., international and national phase patent prosecution and strategic counseling services. He has significant experience in litigating intellectual property issues for information technology companies.

Scott J. Szala, Partner
Winston & Strawn, Chicago
He concentrates on complex civil litigation (commercial, tort, patents, and contracts), white-collar criminal defense, and sports law. He has litigated and/or tried a variety of civil and criminal cases, and has represented numerous corporate officers and directors in these cases.

Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
He has 35 years of experience in the field 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 lead counsel in many patent interferences.

Register Today!
Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.

Continuing Legal Education
Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.

Please note: You will be taken to the
Strafford website to complete your order.