As part of the Practising Law Institute's Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing, Christopher Tobin presented the following workshops:
August 18, 2016
Claim Drafting Workshops: Electronics/Computers
Separate groups in Electromechanical/Mechanical, Electronics/Computers, and Life Sciences (Biotechnology, Chemical/Pharmaceutical) will participate in claim drafting Workshops, which include: individual review of students’ homework; in-depth discussion of claim drafting techniques; and application of substantive patent law to claim drafting problems. Additional claim drafting problems in each technology discipline will be assigned and thoroughly discussed in small groups.
August 19, 2016
Advanced Issues for Written Description: Electromechanical/Mechanical, Electronics/Computers
As Judge Newman has said, "There are few, if any, legal documents more difficult to craft, more fraught with pitfalls than patent applications[.]" Patent preparation requires significant strategic consideration, particularly in an environment where even one inartfully crafted paragraph in a specification may have negative implications on the scope of patent coverage. This presentation will discuss some notable Federal Circuit decisions pertinent to the specification and corresponding claim interpretation, and will offer practical tips for avoiding such pitfalls. The presentation will also include some tips for drafting in view of the first to disclose aspects of the America Invents Act (AIA).
Amendment Workshops: Electronics/Computers
Separate groups in Electromechanical/Mechanical, Electronics/Computers, and Life Sciences (Biotechnology, Chemical/Pharmaceutical) will draft amendments and apply substantive patent law to practical patent prosecution problems under personal faculty guidance. Faculty will review and critique each individual student’s amendments from the homework assignment; sample amendment drafting problems in each technology discipline will also be assigned and discussed.