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Intellectual Property Resources "Advanced Patent Prosecution Workshop"

Monday, November 3rd, 2014

Intellectual Property Resources "Advanced Patent Prosecution Workshop"

Monday, November 3rd, 2014

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Advanced Patent Prosecution Workshop: Claim and Specification Drafting for USPTO with an Eye toward Enforcement

Monday November 3, 2014 8.30 – 16.00
Forum Atidim Ramat Hachayal Israel

Course Fee includes course materials, continental breakfast, mid morning refreshments, lunch and parking. NIS 3800 + VAT. 15% discount for members of the Forum of In House IP Managers and Counsel.

Registration Deadline: October 28

In this advanced one-day program, you will have a unique opportunity to receive hands-on drafting experience under the guidance of a globally recognized patent practitioner with an eye toward enforcement. You will receive individualized feedback on claim drafting and amendment writing skills.

Who Should Attend: This program is designed for private or corporate practitioners with patent experience, especially in the computer hardware, software, and electromechanical fields, who wish to improve their general claim drafting and amendment writing skills, especially in areas where enforcement is critical.

Course Program: The course will cover general issues in drafting patent specifications and covering specific issues and challenges. The course will give participants the opportunity to have hands on experience in drafting with review by the faculty.

08.30 – 09.00Continental Breakfast and gathering
09.00 – 12.30Morning Session (there will be a mid-morning break)
Advanced Specification and Claim Drafting Issues. The morning will cover advanced issues in drafting of patent specifications. Areas will include the written description, enablement and best mode requirements of 35 USC §112, as well as practical tips for ensuring the specification is truly a primary source of claim interpretation. The focus will be on language and techniques to avoid, as well as tips for improvement. The discussion will also include recentCAFC law applicable to each technology.Discussions will include recent Supreme Court decisions on patentability (Alice, Bilski, Mayo) and definiteness (Limelight), as well as the impact on written description of other recent cases from outside the software and electromechanical areas (Ariad). Tips will be provided to draft specifications that support broad claims and to avoid unwanted limitations. The discussion will also include the impact of recent Federal Circuit and Supreme Court cases on damages issues, such as the Entire Market Value Rule (Lucent v. Gateway, LaserDynamics), and how to draft claims to maximize a damages recovery.
12.30 – 13.30Lunch Break
13.30 – 16.00Afternoon Session
The faculty will individually review students’ homework and additional claim drafting problems. It will be a unique opportunity for questions to be answered individually or in group discussions, and for students to receive individualized feedback.

Faculty Michael Rosen is an intellectual property attorney and a Principal at Fish & Richardson. Michael is fluent in Hebrew and began working in Israel on behalf of Fish in August 2014. He specializes in all aspects of patent litigation and strategic counseling in technology areas ranging from the life sciences to computer software and hardware to consumer electronics, and he has experience at the trial, appellate, and Supreme Court levels. Michael’s Israeli clients include companies in the network security, agrichemical, and medical device fields, as well as the technology transfer offices of Israeli universities. He is a graduate of Harvard College and Harvard Law School, and he has written articles for a variety of legal and business publications. Michael has been named a Top Young Attorney and one of San Diego’s “40 Under 40” by the San Diego Daily Transcript. He also teaches patent law at the University of San Diego School of Law. Michael has previously spent two years living in Israel.

Click here to register.


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