Patent Prosecution

B559 is taught by

Patent prosecution involves counseling with clients to understand their inventions, drafting patent applications designed to optimize legal protections for the inventions, and advocating for the grant of respective patents before U.S. and foreign patent offices. In the process of doing so, a weave of federal statutes, regulations, and case law must be taken into account in crafting and prosecuting patent applications that maximize clients' rights. This course will provide a complete overview of the patent process and will emphasize practical skills that are the foundation for effective patent prosecution.

The course begins as most representations begin, focusing upon the initial client contact and matters that must be well handled at the start. Issues and regulations related to subject matter conflicts and party conflicts, and practical techniques for investigating/handling them, will be addressed. This is followed by instruction upon how to work with clients (inventors) to understand and develop their invention disclosures to enable maximal protection.

In logical sequence, the course turns to a series of lectures that provide a review of the statutes, regulations, patent office rules and case law that govern the requirements of an application for patent, combined with practical drafting sessions for the major patent application components: claims defining the scope of the invention; the specification containing a detailed written description sufficient to enable others to make and use the invention; the background section setting up the need for the invention. Several in-class and take-home practical sessions will be given to provide hands on drafting experience designed to simulate real world experiences as a patent attorney.

The prosecution of patent applications typically involves a series of exchanges between the patent attorney and the Patent Office Examiner in which arguments are forwarded with respect to whether the invention (as defined by the claims you have submitted) is sufficiently unique to deserve patent protection. These exchanges explore whether the claims define an invention which meets the statutory requirements of novelty and nonobviousness set forth in Title 35 of the United States Code. It is the Examiner's job to make sure that no "unworthy" inventions proceed to patent. It is your job as an advocate to convince the Examiner that the claimed invention is worthy, and to help the client make key decisions whether the claims need to be amended to more fully distinguish from the prior art. Again, practical drafting sessions will be conducted.

After an application has been successfully prosecuted with a given set of claims, there are still other issues that need to be considered. Should another related application be filed to pursue additional protection through claims that are worded differently? "Continuing" patent application practice affords the opportunity to do this, and the related principles and procedures will be addressed in the course.

Patent prosecution requires an understanding of a series of statutes, regulations and cases, and how they shape effective advocacy in securing patent rights for your clients. This course will lay a foundation of understanding and practical experience that will provide value to those who are considering patent law as a specialization as well as those who simply want to develop a better understanding of the patent process.

Patent Law is a prerequisite for this course.