PRG Magalog For Summer and Fall 2013 Advanced Courses Programs

PATENT RESOURCES GROUP
IN PATENT LAW ANNUAL SUMMER AND FALL PROGRAMS

Fall Program
CO R UR EA SE T S!
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Hyatt Regency Huntington Beach Resort and Spa Huntington Beach, CA Oct. 16-22, 2013
Join Us in California Get the BEST Advanced Patent Training in the World!
Summer
Program
Come to DC for Three Great Courses, Including Two Brand New Courses!
Hilton Crystal City Washington, DC August 5-7, 2013

THE CHOICE
OF
EVERY GENERATION
OF
PATENT ATTORNEYS SINCE 1969.
Register now at www.patentresources.com
PRGs 2013 Annual Summer and Fall Programs in Patent Law

For over 40 years, Patent Resources Group has been the nations leading educator of patent professionals, providing attorneys, agents, engineers, and scientists from around the world with comprehensive courses and publications that set the industry standard for patent education.
WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN WASHINGTON, DC IN AUGUST AND IN CALIFORNIA IN OCTOBER? BECAUSE PRGS ADVANCED COURSES:
Will arm you to deal with the complexities of the America Invents Act all of our returning courses have been updated as needed to reflect the impacts on you and your practice of the America Invents Act (AIA) of 2011, including the final changes that took effect in March 2013. In addition, our special oneday course focusing solely on the AIA is being offered at both the Summer and Fall Programs. This is a course that every practitioner needs to take. Provide an amazing value if you register for your Fall Program courses by August 26, 2013, you'll pay the same tuition rates that weve been charging since 2005! And if you come to our programs every year, youll continue to benefit from our special Loyalty Program discounts for our Advanced Courses (see below). Go beyond the basics, showing how to apply the law to real-world intellectual property issues and to make calculated legal and business decisions. Give you practical insights that you can apply immediately when you get back to the office. Are an investment in your practice or your company, increasing both your ability to successfully prosecute patent law and the value you bring to your employer. Provide an unparalleled opportunity for networking and exchanging ideas with our faculty and your fellow attendees.
Register soon spaces will fill quickly!
PRG THE CHOICE OF EVERY GENERATION OF PATENT ATTORNEYS SINCE 1969.
About PRGs Loyalty Program

atent Resources Group's Loyalty Program provides preferential pricing at our Advanced Courses Programs. If you were a paid attendee at any PRG course in 2012 or already in 2013, you are automatically a loyalty member and will be entitled to special pricing when you attend any courses at our 2013 Summer or Fall Advanced Courses Programs! And after being a paid attendee at any PRG course in 2013, youll automatically be eligible for Loyalty Program benefits in 2014. Loyalty Program members save $200 on tuition for each 2- or 3-day Advanced Course and $100 for each 1-day course. (But you'll get special Loyalty savings of $200 for all one-day courses at the 2013 Annual Summer and Fall Programs!)
2 www.patentresources.com
Hyatt Regency Huntington Beach Resort and Spa

HUNTINGTON BEACH, CA OCTOBER 16-22, 2013
Three-Day Courses: October 16-18, 2013 (Wed-Fri) Art & Science of Patent Searching Patentability, Validity & Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 6
Faculty: Brian Thurmond and Jonathan Skovholt
Register by August 26 for Lowest Fall Tuition!
Comprehensive PCT Practice: How to Master Its Challenges

Faculty: Carol Bidwell and T. David Reed
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10 16 18 24
Drafting Patent License Agreements Federal Circuit Law (2011-2013)
............................................. Faculty: D. Patrick OReilly, Brian Kacedon, William Pratt, and Ronald Bleeker .................................................. Faculty: Gale Peterson, Jon Hokanson, Sharon Israel, and Kara Stoll
Post-Grant Patent Practice: Review and Reexamination

Faculty: Kevin Laurence and Matthew Phillips
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One-Day Courses: October 19, 2013 (Sat) America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Faculty: Paul Gardner and Edward Manzo
When, Why and How to Effectively Appeal to the USPTO Patent Trial and Appeal Board
Faculty: Bill Smith and Joseph Lucci
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Three-Day Courses: October 20-22, 2013 (Sun-Tues) Chemical Patent Practice

........................................................... Faculty: Tom Irving, Paul Browning, Jill MacAlpine, Deborah Herzfeld, Kathryn Sanchez, and Rona Nardone
Crafting and Drafting Winning Patents

Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris
..........................................
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12 advanced patent law courses are available for the 2013 Annual Fall Advanced Courses Program, and 3 courses are available for the 2013 Annual Summer Advanced Courses Program. Tuition for each Fall three-day course is $2,195 through August 26 and $2,295 after that date. Combined tuition for the Fall Patent Searching Course and Workshop is $2,590 through August 26 and $2,690 after that date. Tuition for the Summer two-day course is $1,995, and tuition for the one-day courses at both Programs is $995. Loyalty Program members save $200 on tuition for all Advanced Courses at these two programs!
Designing Around Valid U.S. Patents

Faculty: Patrick Burns, John Pinkerton, and Patricia Prior
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Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman
Procuring and Enforcing Business Method and Other Software-Based Patents After Bilski and BMC
Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan
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Hilton Crystal City

WASHINGTON, DC (ARLINGTON, VA) AUGUST 5-7, 2013
Summer Program August 5 - America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Faculty: Paul Gardner and Edward Manzo
August 6 - Strategic Patent Portfolio Management in the Era of Legal Chaos, First-to-File and Budget Demands GNEW COURSE!
Faculty: J. Matthew Buchanan
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30
August 6-7 - Prevailing at the ITC: Managing a Successful Section 337 Investigation GNEW COURSE!
Faculty: P. Andrew Riley, Christine Lehman, and Anthony Del Monaco
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Please note that the faculty members listed for each course are subject to change prior to the actual course date.
www.patentresources.com 3
America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions
Projected State Bar CLE Credit:
Course Faculty
Offered at Both the Summer and Fall Programs!
6.0 Hours
Huntington Beach, CA October 19, 2013 (Sat) Hyatt Regency Huntington Beach Resort and Spa 8:15 a.m. - 11:30 a.m. and 1:30 p.m. - 4:45 p.m.
Paul Gardner, PRGs academic director, has over 45 years of experience in examining and prosecuting patent applications, litigating patents, and teaching patent law and Patent Office practice to thousands of attendees for PRG and the UCLA, University of Washington, and Seattle University law schools. Edward Manzo, a partner at Husch Blackwell, is known for his groundbreaking patent work in the courtroom, the classroom and the legal community. He has successfully resolved numerous patent and trademark infringements and misappropriations on behalf of clients in a variety of industries. He is an adjunct professor at a major law school and the author and editor-in-chief of three respected reference books.
Registration deadline: September 25, 2013
Washington, DC August 5, 2013 (Mon) Hilton Crystal City (Arlington, VA) 8:30 a.m. - 11:45 a.m. and 1:00 p.m. - 4:15 p.m.
PAUL GARDNER
PATENT RESOURCES GROUP ALEXANDRIA, VA
EDWARD MANZO
HUSCH BLACKWELL SANDERS WELSH & KATZ CHICAGO, IL
Course Description he extensive, complicated, unprecedented statutory changes and additions made by the America Invents Act have now become fully effective. Not only is it necessary for all patent professionals to know the new law, we must during a transition period that will last for many years to come be able to determine when the AIA law applies and when the pre-AIA version of the law applies.
Registration deadline: July 15, 2013
Why Should You Take This Course? The America Invents Act, which is now fully effective, is the most significant development in the patent profession in a generation. Those who lack a thorough understanding of the full impact of this legislation run the risk of untold consequences to their practices and their clients businesses. This course provides crucial insights into the new law, its consequences, nuances, and ambiguities, and also to the different possible interpretations that the Federal Circuit will be called on to resolve in the years ahead, insights that will be invaluable to those who attend the course.
The content of this course was created with the goal of assisting patent attorneys and agents in fully understanding the new law, its consequences, nuances, ambiguities and unresolved issues created by the new statutory language.
Comment from previous attendee: Lecturers, materials, location everything with PRG exceeds expectations and is of the highest quality. Steve Rost Taft Stettinius & Hollister LLP October 2012 attendee The course lectures and materials include analyses of the following aspects of the AIA law: 1. The first inventor to file system, which became effective on March 16, 2013, and replaces the first to invent system of the preAIA law. The course lectures and materials analyze in detail the provisions of completely rewritten Section 102 of Title 35 U.S.C., which expands both geographically and temporally
the universe of prior art that may render claims unpatentable for lack of novelty or for obviousness under Section 103. Incorporated in our analyses and materials are the Patent Offices new rules implementing the firstinventor-to-file regimen, its extensive commentary interpreting the several unclear provisions of the AIA version of Section 102, and its extensive examination guidelines. 2. The new Post Grant Review proceeding (so-called by the applicable new statute, Chapter 31, Sections 321-329) before the newly named Patent Trial and Appeal Board, (formerly the Board of Patent Appeals and Interferences). This course considers in depth the requirements, limitations, potential risks and consequences of such a review, which
may be initiated by any third party who desires to challenge the validity of any claims in a patent issued or reissued during the nine month period preceding initiation of the review, on the ground(s) of failure of the claims(s) to comply with the requirements of one or more of Sections 101, 102, 103 or 112 (with the exception of a best mode violation, discussed below). 3. A new Inter Partes Review proceeding before the Board under new and revised Sections 311-319, effective September 16, 2012, which replaces pre-AIA inter partes reexamination. The new proceeding will permit a third party to seek cancellation of claims in any patent (no matter when filed or issued) for lack of novelty under Section 102 or obviousness under Section 103, but based only on prior patents or printed publications. 4. A new derivation proceeding under new Section 291 of the statute, a proceeding before the Board whereby a patent applicant may establish that the inventive entity named in an earlier-filed application published within a year prior to initiation of the proceeding was derived by the earlier filer from the inventive entity initiating the derivation proceeding. 5. Revised Section 301 of the statute which permits any person to submit not only prior art consisting of patents or printed publications believed to have a bearing on the patentability of a particular patents claims, a limitation of the previous version of the statute, but also statements of the patent owner filed in a federal court or Office proceeding wherein the patent owner expressed a position on the scope of any claim of the particular patent, and also related documentation (e.g., court pleadings and/or evidence). Such written
statement(s) and related documentation may be considered by the Office in any proceeding reviewing the patent, but only with respect to interpretation of the claim(s) involved. 6. New Section 257, which permits the owner of a patent to dispose of potential inequitable conduct issues via a request for supplemental examination of the patent by the Office to consider, reconsider, or correct information believed by the applicant to be relevant. Applying the substantial new question of patentability standard, the Office will decide whether to order ex parte reexamination based on the information submitted in support of the patent owners request. If reexamination is ordered, the Office will consider all of the information submitted, not just the patents, printed publications and newly-added written statements to which ex parte reexamination requests are otherwise limited under Chapter 30 of the statute, Sections 301-307. 7. A Transitional [8 years, ending September 16, 2020] Program for Covered Business Method Patents, a post grant review proceeding before the Board (mentioned in paragraph 2 above), for challenging the validity of any covered business method patent for which the petitioner initiating the proceeding (or his/her privy) had been charged with infringement. (Covered patents are those claiming a method or corresponding apparatus for performing data processing...operations used in the practice...of a financial product or service other than in technological inventions. Sec. 18(d)(1) of Public Law 112-29.) 8. New best mode law is a step toward global harmonization. The statute retains the
best mode disclosure requirement in Section 112, Paragraph 1, but eliminates its violation as the basis for an invalidity or unenforceability (inequitable conduct) defense. Newly rewritten Section 282(a)(3)(A) of Title 35. 9. Prioritized Examination, a procedure for obtaining expedited examination of applications, subject to applicants compliance with certain prerequisites and payment of significant fees, aimed at final disposition of the application with 12 months of the Offices granting of prioritized status. 10. Prior user rights pursuant to rewritten Section 273, under which a good faith, domestic commercial use of a claimed invention more than one year before the effective filing date of a claimed invention (or the date the claimed invention was first disclosed under a limited one-year grace period provided in Section 102(b)) is a defense to infringement. 11. Other changes in the AIA of less substantive concern and/or less frequently encountered, will also be considered, albeit to a lesser extent, such as Added inventors oath or declaration provisions under rewritten Section 115 of Title 35, Very limited patentability of tax strategies, Patent Office fees, including new micro entity fees, Preclusion from evidence of failure of an accused infringer to obtain advice of counsel, and Elimination of qui tam actions for false marking. G
he Hyatt Regency Huntington Beach Resort and Spa will be your home away from home while you attend PRG's Fall Advanced Courses Program.
Art and Science of Patent Searching Patentability, Validity & Infringement

... And Optional Patent Searching Workshop
Course Faculty The faculty consists of patent searching and analysis leaders at Landon IP who have
15.0 Hours
Huntington Beach, CA October 16-18, 2013 (Wed-Fri) Hyatt Regency Huntington Beach Resort and Spa 8:15 a.m. - 11:30 a.m. and 1:30 pm. - 4:45 p.m. (Wed-Thurs) 8:15 a.m. - 11:30 a.m. (Fri) Optional Workshop 1:30 p.m. - 4:45 p.m. (Fri)
expert search experience as attorneys, patent search instructors, and examiners with the U.S. Patent and Trademark Office (USPTO).
BRIAN THURMOND
JONATHAN SKOVHOLT
LANDON IP, INC. ALEXANDRIA, VIRGINIA
Course Description
Registration deadline: September 25, 2013 (Register by August 26 for best tuition rates!)
Why Should You Take This Course? The Patent Searching course presents a systematic process for performing prior art searches with greater efficiency and precision. It is designed to benefit a broad audience, including novice searchers, seasoned patent practitioners, and search professionals. The course also provides unbiased, detailed information concerning the latest databases and tools of the trade. Expert tips from search professionals are provided to enable high-level patent research through proper scoping, structuring, and performance of the search. Patent practitioners will recognize that a robust understanding of the prior art is a vital part of the patent process, particularly in view of accelerated examination demands and the America Invents Act.
It provides direction for determining when a search is needed and what types and sources of information should be searched in the process. Patent searching is both an art and a science. Consequently, search capability improves with practice. But optimum practice requires a solid foundation for those who seek to conduct searches accurately and efficiently. The course teaches when, how, where and why to conduct a search and is appropriate for those who will conduct the search or commission it. Designed for patent attorneys and agents, inventors, paralegals and research managers, the course and its materials will be understood by anyone from the inexperienced to advanced practitioners. Unlike workshops that are taught by competing database providers, this global course is not tied to a particular search engine, a database product or a patent information service. Instead, the instructors teach skills that are applicable across databases, both proprietary and public, and without bias toward the features of a particular search engine. Unique among its many features, the course provides a comparison of the major patent search engines and teaches the strengths, weaknesses and benefits of the database providers who provide them.
his course comprehensively teaches how to conduct a professional patent search.
Comments from previous attendees: Well structured course. Good pace. Very useful tips and information. High relevance to my specific organization. I'm entirely new to this field. It was general enough, but detailed enough, for a beginner like myself. Highly competent instructors. The curriculum and text were designed and written by twelve practitioners: eight experienced patent information specialists and four former examiners with expertise in both English and foreign language searching. The
curriculum reflects the combined expertise of Landon IP, which is one of only three companies selected by the USPTO to conduct patent searches on its behalf with a view to reducing USPTO examiners towering examination backlog. Upon completion of the course, the attendee will have learned: How to approach a search in a systematic, methodical and exhaustive way. How to properly scope the search before even beginning.
How to carefully search by classification, text query progression, and citations, knowing the benefits and pitfalls of each. Both the major differences and subtle nuances in conducting a patentability, validity or infringement patent search. Issues unique to searching within specific technical disciplines. Approaches to searching non-Englishlanguage patents and published applications. Approaches literature. to searching non-patent
Course materials The text for the course is Art & Science of Patent Searching Patentability, Validity & Infringement, edited by Matthew Rodgers, Long Nguyen and David Hunt. The thoroughness of the text will minimize the need for note-taking at the program.
Optional Patent Searching Workshop

A patent search engine user account is needed for the Workshop. Please contact PRG if you need assistance in obtaining one. This Workshop is an optional add-on to the Art and Science of Patent Searching course. It gives attendees the opportunity to practice hands-on patent searching alongside the course instructors. The faculty will work with the attendees to answer questions and provide guidance as they execute their searches in real time. The Workshop is structured to test each attendees retention of the concepts covered in the course as they put their training to use in several sample search projects. Attendees will be provided with multiple sample disclosures, encompassing a wide variety of technologies, on which they will base their search. The informal, lecture-free setting will allow each attendee to work independently, but in close proximity to an instructor. Attendees must bring their own laptop computers and will be provided with wireless Internet access in the classroom. Attendees are also asked to bring
their own search engine user accounts so that they will be able to practice using familiar search tools. The instructors will be able to provide assistance with any of the major patent search engines. The attendees will be guided through scoping the search, performing the search and analyzing their results. Answer keys will be provided at the end of the Workshop so that participants may gauge their progress and have a reference to use for additional practice following the class. Requirements and Prerequisites: Completion of the immediately preceding 2013 Art and Science of Patent Searching course Important: Wireless-enabled laptop computer (Internet Explorer or Firefox web browser, and Microsoft Office package recommended) Important: Patent search engine user account (in an attempt to focus on course concepts and high-level searching techniques, publicly available search engines cannot be solely relied upon for the lab portion of this course) Important: Unrestricted use of third-party wireless connection (please verify with your IT department that your security settings will allow access to the wireless hub necessary for the course). G
Approaches to reporting search results. Differences between the major patent search engines and important considerations in selecting an appropriate search tool. Ways to get high-level information from patent search results. The basics of several peripheral topics including the use of the USPTO search templates, searching for accelerated examination, and searching using industry standards.
elax in the sun by the lagoonstyle swimming pool.
Chemical Patent Practice

Course Faculty
15.0 Hours
(Including 2.0 Hours Legal Ethics)
The faculty has decades of collective experience across the complete spectrum of chemical practice.
Huntington Beach, CA October 20-22, 2013 (Sun-Tues) Hyatt Regency Huntington Beach Resort and Spa 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m. (Sun-Mon) 8:15 a.m. 11:30 a.m. (Tues)
TOM IRVING
PAUL BROWNING
JILL MACALPINE
DEBORAH HERZFELD
RONA NARDONE TEVA PHARMACEUTICALS FRAZER, PA
KATHRYN SANCHEZ DUPONT WILMINGTON, DE
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC
Course Description his up-to-the-minute course teaches the chemical patent practitioner how to use fundamentally sound principles to prepare and prosecute a United States chemical patent application in a conservative way and in view of all of the opportunities and pitfalls afforded by the AIA,to enhance such possibilities as:
Why Should You Take This Course? Are you well-versed on how chemical claims are constructed and construed? Well enough to avoid an overly narrow, often disastrous claim construction leading to a royalty-free transfer of patented technology to your competitor? Well enough not to trip up on obviousness over KSR? If youd like to answer these questions with a resounding yes then you should attend our highly-acclaimed, comprehensive Chemical Patent Practice course. Dont fail your clients or yourself in these tough economic times learn from the best.
obtaining broad claim construction for literal infringement purposes, particularly by avoiding "vile" language (i.e., lightning rods for noninfringement and 112, para. 2 invalidity) that is best described as patent profanity; utilizing the doctrine of equivalents to the extent that the doctrine still exists; surviving Festo; destroying, not rebutting, a defective prima facie case of obviousness in our current postKSR world, including illustrations from several real U.S. patents prosecuted by a faculty member; obtaining the broadest possible claims by avoiding too many and unduly narrow limitations; obtaining claims that will be directly and literally infringed by competitors rather than by customers; proving literal infringement of claims in litigation; obtaining claims infringed by downstream infringers; preparing and prosecuting the application to avoid inequitable conduct in view of the Federal Circuit's en banc decision in Therasense and progeny thereof, and the impact of the AIA supplemental examination procedure that went into effect September 16, 2012; and understanding the implications of the various provisions and effective dates of the America Invents Act (AIA), particularly as they relate to filing strategies in and around the March 16, 2013 date when the first inventor to file provisions took effect.
For example, the rising tension within the Federal Circuit panels on the role of the specification in claim construction and the increasing pressure to revisit the Cybor rule of de novo review of claim construction on appeal will bring important developments for practitioners in the very near future on what to expect for claim construction. For the practitioner, the take-home message remains
to prosecute as if your life depended on literal infringement and lay the groundwork in the specification (the single best guide to the meaning of a claim term) for a broad claim construction. This course, presented by an experienced faculty, each with a significant depth of experience, suggests many practical approaches with those objectives in mind. We discuss how to establish patentability
and validity under 103 in the post-KSR world, where knowledge and direction equate power. Case studies, involving real U.S. patents, will provide a framework for creative thinking on the law of prima facie obviousness. We will look closely at the guidelines for best mode disclosure from a substantive and ethical point of view, particularly in view of changes made in the AIA. In addition, we consider the Federal Circuit inequitable conduct decisions in the context of the en banc Therasense decision, including its progeny, many of which will be reviewed for the lessons they provide to both in-house and private practice lawyers. In fact, the inequitable conduct and best mode discussions provide the two hours of ethics that is otherwise sometimes hard to find, particularly on substantive topics related to your practice. The ethics discussion should take place during the last two hours on the second day (as currently estimated). The last day will include a discussion of a hypothetical chemical patent problem that synthesizes and reinforces the teachings of the class. The enactment of the AIA did not wipe the patent law slate clean. Because of the way the AIA was written, the old law will be relevant to practitioners until at least March 16, 2034! Thats right practitioners will have to be experts in both old and new laws for at least another 22 years! The Chemical Patent
Practice faculty has lectured on the new law extensively and has studied it intensively in conjunction with people who were instrumental in the drafting of the legislation. The faculty will bring all of that background to their presentations to you. And do not be misled into thinking that this course is applicable only to patent prosecutors. The principles taught will greatly help those involved with prelitigations, litigations, Orange Book listings, due diligences and analysis of third-party patents for validity, infringement, and enforceability issues. Comments from previous attendees: This is one of the best courses that I have ever taken. All of the instructors are excellent and provide very helpful practical tips regarding chemical patent practice. The material provided is excellent and a very good reference guide. Mark Cohen Scully, Scott, Murphy & Presser PC October 2009 attendee Good overview and reminders of good practice points. Great consolidation of information and tips based on recent case law. Very current. Heather Gorman Thomas, Kayden, Horstemeyer & Risley, LLP April 2010 attendee
Course Materials The definitive treatise, Chemical Patent Law, written and continually updated by the Finnegan, Henderson, Farabow, Garrett & Dunner faculty, with the invaluable assistance of editor Stacy D. Lewis, will be provided to attendees at the course. This treatise covers virtually every situation that can arise in the preparation and prosecution of a chemical patent application. It will remain on your desk and in continual use long after the course. The treatise underwent a complete overhaul in the aftermath of the enactment of the AIA to provide completely updated materials to the course attendees. Although the treatise is of great value, the faculty members have found that the best vehicle for teaching is the use of slides, which will be provided in book form to attendees on the first day of class. The slides book will contain ample room for note-taking and cross-referencing and, as such, will be a valuable addition to your daily kit of chemical patent practice tools. G
njoy the beautiful statues, landscaping, flowers and more on the resort's property.
Comprehensive PCT Practice: How to Master Its Challenges

Course Faculty The two faculty members have extensive government and corporate experience in all
15.0 Hours
aspects of PCT matters.
Huntington Beach, CA October 16-18, 2013 (Wed-Fri) Hyatt Regency Huntington Beach Resort and Spa 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m. (Wed-Thurs) 8:15 a.m. 11:30 a.m. (Fri)
CAROL BIDWELL
CONSULTANT ON PCT MATTERS FOR THE WORLD INTELLECTUAL PROPERTY ORGANIZATION; FORMER SUPERVISOR OF THE USPTO OFFICE OF PCT LEGAL ADMINISTRATION
T. DAVID REED
CONSULTANT ON INTERNATIONAL PATENT PRACTICE SPECIALIZING IN PCT; FORMER SENIOR PATENT ADVISOR, GLOBAL PATENT SERVICES, THE PROCTER & GAMBLE COMPANY, CINCINNATI, OHIO
Course Description ince coming into force in 1978, the Patent Cooperation Treaty (PCT) has established itself as a valuable way for applicants to obtain patent protection in many countries around the world. The number of PCT Contracting States is currently 146 and growing. PCT members include the vast majority of industrialized, developing and emerging countries of the world. The Comprehensive PCT course guides the attendees chronologically through the international phase of the PCT and into the national phase before the national and regional patent Offices of interest. The instructors present strategies for effective use of the PCT, the benefits obtained and options available when using the PCT. In addition, the course covers the numerous safeguards available for applicants, including the restoration of priority rights and incorporation by reference.
Why Should You Take This Course? Attendees will learn the benefits and advantages of the Patent Cooperation Treaty (PCT) procedure as well as the numerous options and safeguards available for applications filed under the PCT. The Comprehensive PCT course enumerates procedures and strategies designed to obtain patent protection for inventions in multiple countries through the filing of a single international application under the Patent Cooperation Treaty. While a basic working knowledge of the PCT is useful when taking this course, it will prove valuable to both new and experienced users of the PCT.
The PCT allows applicants to secure a filing date in all PCT Contracting States by filing a single application in their home country and in their home language. The PCT provides a comprehensive search of the prior art and a preliminary, nonbinding written opinion on the novelty, inventive step (non-obviousness) and industrial applicability (utility) of the claimed invention. In addition, applicant has an additional 18 months beyond the end of the Paris Convention priority year to make final decisions on where to seek patent protection. The delay in the associated expenses of national filings alone make the PCT a costeffective procedure and can result in a significant cost saving by helping to avoid unnecessary filings and/or allowing filings in countries where commercial importance has grown between international filing and national phase entry. By filing an international application, all PCT Contracting States and four regional offices are automatically designated and are available for
national phase entry later in the process. Whether the international application is the first filing or it claims priority to an earlier filing, the applicant does not have to make the final decision on where to seek patent protection until 30 months from the earliest priority date. The final decisions are based on the information obtained in the international search report and the international preliminary report on patentability as well as information obtained by the applicant regarding the scientific status and commercial value of the invention. In short, through using the PCT, the applicant will have a much better idea of the likelihood of obtaining commercially meaningful patent protection for the claimed invention. In addition, the applicant will have the opportunity to obtain additional search results through the supplementary search option as well as have the opportunity to advance prosecution by using the optional international preliminary examination procedure. Applicant can amend the application and/or provide arguments for
consideration by the examiner prior to the issuance of the international preliminary report on patentability (Chapter II of the PCT). Depending on the International Search and Preliminary Examining Authorities selected by the applicant, certain national and regional patent Offices (including the US) allow a favorable PCT work product (for example, preliminary report on international patentability) to be applicants ticket to accelerated examination on their patent prosecution highway. This Comprehensive PCT course discusses: a) when the use of the PCT is advantageous and when it is not; b) the effects on patent term
based on the first (priority) application; c) selection of international authorities under the PCT for greatest advantage; d) the information received by applicants during the PCT process; e) entering the national phase; f) upcoming changes in the PCT; g) use of PCT search and examination results to utilize the Patent Prosecution Highway; h) the effect of the America Invents Act (AIA) on practice under the PCT; plus a host of other PCT-related topics. In addition, the course presents the growing information available from the WIPO Internet site via the PATENTSCOPE search tool. The Comprehensive PCT course includes a detailed look at patent-related provisions of the Paris Convention.
Comments from attendees of past PCT courses: Excellent instructors - thorough coverage of subject. The course materials are excellent. The lecturers have much experience in PCT-related activities and have the ability to explain that to a class. Outstanding speakers with practical experience. Course Materials A comprehensive text is used in the course presentation that includes detailed explanations of the various topics and sample forms. G
ip a cool beverage on the Californian patio, overlooking the lush natural surroundings and the Pacific Ocean.
Crafting & Drafting Winning Patents

Course Faculty
15.0 Hours
(Including 1.0 Hour Legal Ethics)
Collectively, over 75+ years of experience litigating, prosecuting and teaching about patents.
DALE LAZAR
DLA PIPER US LLP RESTON, VA
PAUL ULRICH
DINSMORE & SHOHL LLP, DAYTON, OH
JOHN TSAVARIS
KENYON & KENYON NEW YORK, NY
Course Description his Crafting & Drafting course marches to a special drummer and focuses on the end result producing a winning patent that will be held literally infringed and not invalid under (sec)112(a), f/k/a/ (sec)112, para.1, despite the time pressure created by moving to a firstinventor-to-file system under the America Invents Act (AIA).
Why Should You Take This Course? Learn the areas of chaos in Federal Circuit jurisprudence of primary concern to practitioners who prepare and prosecute patents. The course will focus on a series of cases where the patent owner lost, not because of what the litigators did, but because of how the patent practitioner drafted and prosecuted the application. Compounding the problem is the time pressure created by moving to a firstinventor-to-file system under the America Invents Act (AIA) and the anticipated increase in the filings of provisional applications with their many traps for the unwary. The course will teach you how to write provisional applications and draft and prosecute non-provisional patent applications to avoid these pitfalls.
The Conundrum. Chaos now reigns supreme in Federal Circuit case law (and the judiciary of the U.S. district courts have begun to say so openly). For example, the importation of claim limitations from the specification into the claims albeit under the rubric of claim interpretation is now rampant, rendering many patents virtually worthless. A case in point is C.R. Bard, Inc. v. United States Surgical Corp., where the court imported the limitation pleated into a broad claim reciting a surgical mesh plug used for hernia repair, relying heavily in doing so on the Summary of the Invention that described a plug having pleats. The court repeatedly referenced the Summary of the Invention throughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patent did recite a pleated plug, without even mentioning, let alone reconciling, the immutable doctrine of claim differentiation that should have sustained the broad claims. Claim interpretation is only one chaos region. There are others where the Federal Circuit case law is equally inconsistent, including the law concerning the written description requirement, means-plusfunction clauses, the doctrine of equivalents, and prosecution history estoppel. This creates an immense dilemma for conscientious patent practitioners trying to write and prosecute patent applications that will provide their clients with the patent protection they deserve. Which cases should be relied on, and which should be ignored?
Comments from previous attendees: Practical advice for drafting enforceable patent claims, sprinkled with supporting legal authority. Spanning the gap between current Federal Circuit law and actual, practical tips on how to incorporate the latest law into successful prosecution practices. Good coverage of current law and potential pitfalls associated with certain practices (I'm planning to make changes to my practice with regard to various pitfalls you have pointed out).
Answer to the Conundrum. There is a sound basis for dealing with the dilemma generated by the Federal Circuit! A practical ex parte practice path is now in being that navigates through the chaos. Its road sign reads LP-CD (Low Profile, Common Denominator Practice). LP-CD, despite the chaos it penetrates and traverses, is charted clearly and boldly in this PRG course. Crafting & Drafting Winning Patents was designed and created by PRGs Professors Paul Gardner and Irving Kayton and enriched by the PRG course faculty.
This course distills everything from the law (and dicta) of the Federal Circuit and its predecessor courts that has a material bearing now, today, and in the foreseeable future, on how we must successfully: 1. Prepare for drafting the application; 2. Design what must be included in, and excluded from, the provisional application and the nonprovisional application specification and drawings and, very importantly, in what form and format it should be included; 3. Engage in claim drafting strategy designed to result in literal infringement, recognizing that this strategy must be taken into account as a principal factor in the earlier design of the specification; 4. Develop a protocol and a philosophy for prosecuting the application that advance and do not defeat the efforts in (1) through (3); and 5. Balance the accomplishments of (1) through (4) against, first, increased costs of crafting and drafting that sometimes accrue and, second, their effect on the length of the patent term that will result, and third, the time pressure created by moving to a first-inventor-to-file system under the AIA.
Crafting & Drafting is not a survey course covering the broad landscape of patent prosecution or a workshop. Instead the course drills deeply into the six specific areas of Federal Circuit chaos that have most seriously and frequently destroyed the value of patents. We will focus on what we can do as patent prosecutors to prepare and prosecute applications that are immune from the chaos. Crafting & Drafting will almost certainly effect a change in your patent law life, because the Federal Circuit has effectively (albeit unwittingly) dictated that it be so. It is noteworthy that many hundreds of patents have already issued using the Crafting & Drafting techniques set forth in this course (several of which will be reviewed), with beneficial effect in license and litigation negotiations. Legal ethics issues including the recent Therasense decision and its profound changes to the law of inequitable conduct and duty of disclosure will be covered from 9:15-10:15 a.m. on the last day of the course, as currently estimated.
Who Should Take This Course? This course is for patent practitioners with a minimum of two years of practice, and preferably more. It is sufficiently sophisticated for even the most experienced. The faculty knows this to be true because the problems and solutions about which they conferred and debated in bringing this course to fruition plumbed the depths of their combined patent law knowledge, experience and ongoing research and scholarship. Beginning patent practitioners should look forward to PRGs four-day Workshop designed specifically for them, The Winning Patents Workshop. For details visit our website at www.patentresources.com. Course Materials A comprehensive, one-volume course text, entitled Crafting & Drafting Winning Patents, and a bound set of lecture slides, are definitive on the subject and will be given to registrants at the course. The Textbook and slides are constantly updated and revised to include recent decisions and changes in the law including the applicable provisions of the AIA. G
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Designing Around Valid U.S. Patents

15.0 Hours
Course Faculty PRG has offered Designing Around Valid U.S. Patents for over 15 years, and it remains one of our most popular courses.
PATRICK BURNS
GREER, BURNS & CRAIN, LTD. CHICAGO, ILLINOIS
JOHN PINKERTON
THOMPSON & KNIGHT DALLAS, TEXAS
PATRICIA PRIOR
GREER BURNS & CRAIN LTD. CHICAGO, IL
Course Description n Markman and Cybor, the Federal Circuit required district courts to construe claims as a matter of law and decided to review claim construction de novo. The object was to make claim construction predictable, so that claims would better perform their public notice function. The result has been an unmitigated disaster, often (but not always) reading limitations into the claims that the examiner did not require to establish patentability over the art of record. In fact, the court has often overridden the examination process, undermining the public notice function of claims ab initio. This course will explore the current condition of claim construction in detail and explain how competitors can use it to their advantage, even when the claims on their face are literally infringed.
Why Should You Take This Course? The Designing Around course distills the patent infringement analysis into comprehensive yet concise step-bystep checklists that can be used by attorneys at all experience levels to assist their clients to develop competitive, noninfringing products.
Comments from previous attendees: Practical explanation of case law to apply to patent drafting, infringement analysis and opinion writing. The substance was excellent. Presentations gave good overviews and the course books give encyclopedic detail for topics of interest. Well organized, very thorough, presenters all know their stuff. Four cookbooks covering (1) literal infringement, (2) infringement under the doctrine of equivalents, (3) infringement of means plus function claim elements, and (4) prosecution history estoppel, are provided. Using and following these cookbooks, which distill opinions by the Federal Circuit and the Supreme Court in cases from Pennwalt to Festo IX, any patent practitioner can counsel his or her client on how to design around the patented invention with almost certain impunity a design that appropriates the patented invention and that, prior to Pennwalt and its progeny, would have been held an infringement rather than the socially desirable activity of designing around.
This course will show practitioners representing potential infringers how to counsel competitive product design under the guidance of Federal Circuit and Supreme Court cases, which will almost always be viewed as effective designing around. How to conduct litigation to achieve a happy ending for your infringement-accused client will be set forth in elegant simplicity. Actual Demonstrations To ensure no confusion on anyones part in this exercise, the faculty and students will go through several claim construction exercises and compare their conclusions with the Federal Circuits claim construction in actual cases. A mock design around exercise will also be presented. The demonstration considers client, marketing and engineering perspectives, in addition to legal analysis. To prepare for the exercises and demonstration, the course faculty will illustrate the accused structures relative to the claims in the landmark, no-infringementby-claim construction cases of C.R. Bard v. U.S.
Surgical Corp. and Nystrom, the noinfringement-by-equivalents cases of Slimfold, Laitram and London, and the super landmark, no-equivalents-at-all after-prosecution-historyestoppel case of Festo IX. These and other cases are presented in literal, graphic clarity.
How to Draft Infringement and Noninfringement Opinions The effects of Seagate, the AIA, and Bard on findings of willfulness, enhanced damages, and fee awards will be discussed in detail. The faculty also explains the substance and form opinions should have to maximize their effectiveness in litigation.
Course Materials The two-volume text for Designing Around Valid U.S. Patents is authored by the distinguished course faculty, each of whom has extensive successful litigation, prosecution and counseling experience. Nothing like these unique books exists anywhere else. G
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Drafting Patent License Agreements

Course Faculty The faculty teaches by sharing decades of combined experience in licensing.
15.0 Hours
D. PATRICK O'REILLEY
D. BRIAN KACEDON
WILLIAM PRATT
RONALD BLEEKER
Course Description
his course and its text provide concrete drafting and negotiating advice with precise references to existing law.
Why Should You Take This Course? Licensing is a key strategy by which companies realize significant value from their patents and technology. The ability to draft, negotiate and interpret license agreements is a core skill for IP attorneys and other professionals who deal with licenses. This course provides a comprehensive overview of key licensing concepts, the drafting of key clauses in a license agreement, and the impact of related topics such as competition law, export control law and the Bayh-Dole Act. It is taught by experienced license professionals with an emphasis on practical considerations and provides valuable insights and discussion for both novices and more advanced practitioners.
The course lays the groundwork for a clause-by-clause examination of all significant elements of the patent licensing agreement. The practical questions always focused on are how and whether each element is sufficient to serve the business needs of the parties while remaining legally viable. The main components of typical licensing agreements, from the opening part through the execution and authentication provisions, are examined in detail. Practical, hypothetical illustrative examples are used, often in workshop form, with carefully crafted problem handouts distributed to the attendees during the course. Throughout the course, the faculty members emphasize achieving legally satisfactory drafting results by recognizing the logical principles that underlie the job to be done. Sample forms are used to explain the practical considerations upon which they are based. Law and precedent are presented in terms that make clear the legal reasoning behind recommended drafting approaches.
Comments from previous attendees: This course provided a great overview of licensing issues and anecdotal scenarios giving rise to said issues. Andrew Weber Honigman Miller Schwartz and Cohn LLP April 2012 attendee I have been drafting license agreements for the Federal government for 6 years, and this course helped tie together everything I've learned in this time. Suzanne Seavello Shope Centers for Disease Control & Prevention April 2010 attendee
The information is very practical and relevant to the 'real world' problems encountered in drafting and reviewing agreements. Glenn Smith Bausch & Lomb, October 2008 attendee This is a course for the craftsman. Both the course and the text provide a solid basis for responding to virtually every license drafting problem that may arise. Even for the highly experienced licensing lawyer, new insights may be provided; at the very least, the course will be a rich, comprehensive refresher. For the less experienced licensing lawyer, it will open vistas, both with respect to hidden problems and to mechanisms for dealing with them.
Legal ethics in license negotiations will be presented during the afternoon session on Day 2 and in misuse issues during the morning session on Day 3, as currently estimated. Course Materials The text for the course is the Seventh Edition of the classic, Drafting Patent License Agreements (BNA), by Brian G. Brunsvold, D.
Patrick OReilley and D. Brian Kacedon. The thoroughness of the text and accompanying slides will minimize the need for note-taking at the program. Moreover, this Sixth Edition includes a computer disk, which has a set of form paragraphs that can be incorporated, with careful editing, into a license agreement to be prepared by the course attendee.
The hardcopy edition of the course text will be given to each attendee at the program. The volume containing the printed slides that will be used throughout the lectures will also be provided at the course; this volume will include extensive license drafting workshop materials and Justice Department licensing guidelines. G
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Federal Circuit Law (2011-2013)

Course Faculty
INCLUDING COMMENTARY on the America Invents Act
15.0 Hours
The one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the courts history, provide matchless inside perspective and candid, unequaled insight to Federal Circuit law past, present and future. This now becomes particularly unique given the America Invents Act of 2011 (AIA), and the lecturers commentary on whether and how the AIA may affect Federal Circuit law.
GALE PETERSON
COX SMITH SAN ANTONIO, TX (FORMER TECHNICAL ADVISOR TO THE LATE CHIEF JUDGE MARKEY)
SHARON ISRAEL
MAYER BROWN LLP HOUSTON, TX (FORMER LAW CLERK TO CIRCUIT JUDGE LOURIE)
JON HOKANSON
KARA STOLL
LEWIS BRISBOIS BISGAARD & FINNEGAN, HENDERSON, FARABOW, SMITH LLP, LOS ANGELES, CA GARRETT & DUNNER, LLP (FORMER TECHNICAL WASHINGTON, DC ADVISOR TO THE LATE (FORMER LAW CLERK TO CIRCUIT CIRCUIT JUDGE MILLER) JUDGE SCHALL)
Why Should You Take This Course? Each week the Federal Circuit publishes opinions that materially clarify and sometimes alter existing practice. One cannot competently practice as a patent attorney today, in prosecution, litigation, counseling or licensing without an understanding of the Federal Circuits most recent opinions. The distinguished faculty of Federal Circuit Law (2011-2013) will expertly guide you through two years of relevant and up-to-the-minute cases in an interactive lecture format that encourages active attendee participation. Moreover, lecturers will discuss new cases in the context of prior cases (many outside the two-year time span), thus giving you not only current law, but also a perspective on how the law has changed.
America Invents Act of 2011 (AIA) The AIA was signed into law by President Obama on September 16, 2011, and represents, by many interpretations, the most significant change to the U.S. patent system since 1952. The Act, among other things, initiates a first-inventor-to-file system (FITF), and includes provisions on post grant review (PGR), inter-partes review (IPR), preissuance and comment, supplemental examination, a revised grace period and redefinition of prior art to include subject matter that is otherwise available to the public, expands the defense of prior commercial use, retains best mode as a disclosure requirement, but removes best mode as a ground of invalidity, and significantly alters the false marking statute. But those are just the highlights. Apart from the sweeping changes, including a rewrite of Section 102, the Act has sections that will raise questions for years to come until resolved through the courts. Some portions of the Act became effective immediately other portions variously became effective 1 year or 18 months after signing. In general, the FITF portions became effective for applications filed on or after March 16, 2013, and for years to come, practitioners will have to practice under parallel systems the old law and the new law. The lecturers will explain, as appropriate, how the results in particular cases may be affected by the AIA.
Course Description f you have not been reading and closely analyzing all of the Federal Circuits patent opinions during the past years, you may unwittingly be flying blind in some areas of your practice. In virtually every area of patent practice, surprising and often startling opinions are emanating from the court. Often those opinions are at variance with established precedent, but without any admission or acknowledgement of the variance by the panel majorities despite pointed, compelling demonstrations thereof in dissents and concurrences. This course provides deep insight into the Federal Circuits opinions over the past two years and tells you what you need to know to continue to be an effective practitioner. As Chief Judge Rader opines, by understatement, these cases must leave practitioners in a quandary. Indeed! Clearly ex parte practice is not what it once was.
Perhaps indicative of the courts split on claim construction, for example, is the opinion in Retractable Technologies, Inc. v. Becton, Dickinson & Co. (2011). The panel majority, led by Judge Lourie, concluded that body in the claims required a one-piece body, while the dissent by Chief Judge Rader urged that the claim language and claim differentiation clearly required the conclusion that body was not limited to a one-piece body. A divided court declined to rehear this case en banc, yet the split in the court still percolates. The court also continually issues panel opinions that do not necessarily overturn prior panel opinions, but significantly limit the same. An example is In re Katz Interactive Call Processing Patent Litigation (2011), that limits WMS Gaming, Inc. v. International Game Technology (1999) and Aristocrat Technologies Australia Pty Ltd v. International Game Technology (2008), in the area of means-plusfunction limitations. Is Katz a narrow exception, as characterized by a panel majority in Ergo Licensing v. CareFusion (2012), or has the court gone too far in following WMS, as Judge Newman advocated in dissent? One of the areas that harbors the most unsettling and startling developments is the courts linking of claim construction to the written description requirement, an area that, according to Chief Judge Rader, has become opaque to the point of obscuring other areas of this courts law. This linking has resulted in a number of seemingly inconsistent panel opinions, especially in instances where the patent-in-suit has facially broad claims, but a narrowly drafted specification. In Ariad
Pharmaceuticals, Inc. v. Eli Lilly Co., the court en banc confirmed that there is a separate written description requirement that applies outside of the priority contextthat separate and apart from whether the specification enables the claims, the specification must contain a written description of the invention. Nevertheless, the court remains splintered on this issue, and several judges believe that the invalidation of a claim on the basis that it is broader than the invention described in the specification is inconsistent with the Federal Circuits rule of claim construction that embodiments from the specification should not be imported as limitations to the claims. Also, in Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp. (2011), the court, in an opinion by District Judge Whyte, N.D. Calif., sitting by designation, and over a dissent by Circuit Judge Dyk, reversed a district courts conclusion that the specification lacked sufficient written description support given the breadth of the claims, noting that original claims, in some instances, may provide written description support, despite statements to the contrary in Ariad. Nevertheless, Judge Moore, writing for the court in Boston Scientific Corp. v. Johnson & Johnson (2011), reiterated the rule from Regents of the Univ. of Cal. v. Eli Lilly & Co. (1997) that [a] written description of an invention involving a chemical genus, like a description of a chemical species, requires a precise definition, such as by structure, formula, [or] chemical name, of the claimed subject matter sufficient to distinguish it from other materials.
Another hot topic is joint infringement. The Federal Circuit issued its en banc decision in Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp., but avoided answering the fundamental question. As a result, joint infringement may depend on whether a claim may avoid a conclusion that multiple entities are required to infringe if the claim simply defines the environment in which infringement must occur per Advanced Software Design Corp. v. Fiserv, Inc. (2011). The Federal Circuit continues to surprise the bar in other areas as well with its statutory interpretations. For example, in August Technology Corp. v. Camtek, Ltd. (2011), the court rejected a jury instruction based on the AIPLAs model jury instructions, and concluded that a device may be the subject of an offer for sale prior to Its being ready for patenting, but also concluding that there is no actual offer for sale until after conception. Also, practitioners writing applications for computer-aided inventions must thoroughly understand the implications of cases such as Ergo Licensing v. CareFusion (2012), holding claims calling for a programmable control means invalid for failure to disclose a corresponding algorithm although such devices are "off the shelf" devices. And Noah Systems v. Intuit (2012) holding claims invalid because the disclosed algorithm did not implement all claimed steps. Litigation practitioners will be interested in In re Bill of Lading (2012), setting out the ... continued on next page.
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pleading requirements for direct, contributory and induced infringement. But the pendulum swings. After the Supreme Courts opinion in KSR International Co. v. Teleflex, Inc. (2007), seemingly rejecting at least a rigid showing of a motivation to combine reference teachings, the validity of many patents drawn to mechanical and many electrical inventions under 103 became doubtful. However, the pendulum appears to be swinging back Judge (now Chief Judge) Raders dissent in Media Technologies Licensing, LLC v. Upper Deck Co. (2010) that [l]urking just beneath the surface of this courts blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts, seems to have sparked (albeit not in that case) a renewed view of the requirement for motivation. Nevertheless, some panels of the Federal Circuit now permit reliance on common sense to find patents invalid under 103, and more egregiously, despite the lack of any reference supporting the same. When this will end is anybodys guess. But Chief Judge Raders opinion in Unigene Laboratories, Inc. v. Apotex, Inc. (2011), suggests that the court will increasingly insist on some showing of motivation, thus perhaps swinging the pendulum back pre-KSR. This course examines the Federal Circuits postKSR cases in detail. Will the many areas of inequitable conduct currently in doubt be resolved by the Federal Circuits en banc view in Therasense? And the courts adoption of a but-for-plus standard of materiality? Doubtful but maybe. For example, how does witness credibility impact on intent? Compare Aventis Pharma v. Hospira (2012) with 1st Media v. Electronic Arts (2012). And what about the flood of cases held back pending the Federal Circuits decision in Therasense? The course will examine Therasense in detail, with suggestions on complaince with Rule 56(a). The AIA also offers supplemental examination which may cure alleged inequitable conduct. Claims of legal malpractice are increasing at an alarming rate. The Federal Circuit provided some solace in Immunocept, LLC v. Fulbright & Jaworski LLP (2007), holding that it has jurisdiction of legal malpractice claims under certain circumstances. But the Supreme Court granted cert. in Gunn v. Minton (Tex. 2011), and concluded that state courts, rather than federal courts, have primary jurisdiction in malpractice actions, even those that involve substantial questions of patent law. Nevertheless, the Federal Circuit continues to issue opinions that affect the basic practice of patent law. The Supreme Court has also been active in
developing the patent law, often rebuffing the Federal Circuit for failing to adhere to Supreme Court precedent. For example, in In re Bilski, the Federal Circuit attempted to clarify the test for determining whether a claim recites patentable subject matter under 101 by holding that its machine or transformation test is the sole and exclusive inquiry. The Supreme Court promptly rejected the Federal Circuits machine or transformation test as the sole test for patentable subject matter, but declined to articulate a clear test to replace the Federal Circuits test thus leaving a vacuum for the Federal Circuit to fill. The Supreme Court also thoroughly rejected the Federal Circuit's view of 101 in Mayo Collaborative Services v. Prometheus Labs. (S.Ct. 2012), but the Federal Circuit responded in Myriad (2012) in a 106-page opinion continuing to advocate its view of 101. These and other cases involving 101 will be examined in detail. For example, a panel in CyberSource Corp. v. Retail Decisions, Inc. (2011), questioned the validity of Beauregard-type claims, but as a panel opinion could not overturn Beauregard. Does that signal the demise of such claims? And the court has taken CLS Bank v. Alice Corp. (2012) en banc to again address the issue of patent eligibility. In other areas, the Federal Circuit has quashed long-standing abuses. In Uniloc USA, Inc. v. Microsoft Corp. (2011), for example, the Federal Circuit held, in the area of damages, that as a matter of Federal Circuit law that the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. The 25% rule, used for more than a decade, thus disappears. Indeed, in LaserDynamics v. Quanta Computer (2012), the Federal Circuit further narrowed the entire market value rule almost to oblivion. In yet other areas, the Federal Circuit has further explained and thus limited prior even en banc opinions, such as in Spectralytics, Inc. v. Cordis Corp. (2011) further explaining and limiting In re Seagate Technology, LLC, (2007) (en banc). Those are but highlights. Federal Circuit opinions even over the brief span of two years have created law that practitioners must know especially in light of the changing composition of the court. Additionally, although the focus is on the Federal Circuit, recent Supreme Court cases are addressed as well. For example, the Supreme Court has granted cert. in Bowman v. Monsanto (2012) raising issues of infringement potentially having broad implications to the biotech community. The Supreme Court may, once again, rebuff the Federal Circuit's rationale.
Smoothing the Troubled Waters? PRG formerly characterized this course as Recognizing & Understanding Federal Circuit Russian Roulette. The continually strong attendance at presentations of this Federal Circuit course suggests that the patent bar recognizes this aphorism to ring true. In many respects, this is a user-designed dynamic course. Course evaluations are collected and analyzed to determine the topics and emphasis users desire. For the many that have attended this course punctually every two years, the curriculum, in response to user input, retains the topics you have come to expect, but has been expanded to include separate chapters and lectures on Federal Circuit en banc cases and Supreme Court cases, selected important cases that do not conveniently fit within a single topic (crossover cases) as well as noteworthy practice & procedure cases, noteworthy appellate practice cases, joint infringement, and selected Hatch-Waxman cases, among others and now including the AIA. All of the above represents just some of the continually breaking judicial news from the Federal Circuit that will be covered at the Federal Circuit Law course. As attested by hundreds of past course attendees, the faculty presents just the right amount of factual and legal detail for mastering each case discussed. Legal ethics and inequitable conduct will be presented on the second day from 3:00 to 4:00 p.m., as currently estimated.
Course Materials The full substance of the course is captured in the Federal Circuit Patent Law three-volume text, which extends over 1,500 pages. G Comments from previous attendees: Thorough review of each topic and each CAFC decision. Good discussions among speakers and attendees. Very knowledgeable speakers. Fred Burkhart Gardner, Linn, Burkhart & Flory, LLP October 2012 attendee I've been attending this course, periodically, over a number of years, and it continues to get better & better. Steven Fontana Fontana International October 2009 attendee
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Patent Due Diligence in the AIA Era

Course Faculty
15.0 Hours
The faculty, considered collectively, have participated in over 100 due diligence evaluations and will take you through the process soup to nuts, whether you are representing the target or the acquirer.
BRYAN DINER ANTHONY GUTOWSKI ANDREW HOLTMAN
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC AND RESTON, VA
Course Description his course will provide practical guidance for conducting patent due diligence investigations in todays changing legal environment. The panel will explore how the America Invents Act (AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect the due diligence process, while sharing practical techniques and strategies for conducting complete investigations. These tactics apply to both large and small transactions, irrespective of the nature of the specific transaction or the party you might be representing. Now, more than ever, companies contemplating commercial transactionsbe they licensing, corporate mergers, acquisitions, or private equity dealsneed to rely on due diligence counsel to provide a thorough understanding of the value and risks associated with the transfer of intangible assets.
Why Should You Take This Course? As todays tight economy continues to challenge the business of clients, pressure mounts for the patent practitioner to help clients enjoy a higher return on investment in deals involving both acquisitions and licensing-in of patent rights. By the same token, those who represent target companies need to learn the IP strategies that help maximize income from either takeovers or licensing-outs. Attendees consistently grade the Due Diligence course and its faculty with some of the highest ratings of any course that PRG offers. This critically acclaimed course will help you raise your game to new levels, whether you are representing suitors or targets. Sign up now for this 2 day course. Sure, youll miss some time out of the office. But your return on investment will be a finely honed ability to help clients see an increase in their returns on investment.
Comments from previous attendees: This is a very comprehensive due diligence course. The speakers are very knowledgeable and continually supplement the course curriculum with real-world war stories. The course materials are invaluable and include a great overview of AIA. Anthony Colesanti C.R. Bard, Inc. April 2013/April 2008 attendeee The course is up-to-date with current case law. It used a 'real world' example, and the speakers are dynamic and interested in both the subject matter and in teaching. Julie Henrich Plextronics October 2012 attendee [I liked] the fluency and knowledge of the lecturers on the subject. The content and the lecturers are excellent. Im sure this course can help both patent and non-patent attorneys. April 2011 attendee
During the course, you will interact with instructors and other students while exploring case-study examples and lecture topics on a wide range of issues: common legal-interest agreements claim construction freedom to operate validity assessments inequitable conduct patent eligibility, and ownership/transferability. The lively and entertaining presentation covers every phase of a due diligence investigation. Beginning with the initial involvement of patent counsel, the panel navigates a course through early informationgathering, drawing in the attendees as part of the due diligence team to spot critical patent issues that can make or break a deal. The panel also shares effective strategic approaches to focus investigations and requests for further information during the plunge into the data
room and to facilitate making recommendations to the client that may ultimately affect the price and structure of the deal. On Day 1, from approximately 2:30 to 4:45 p.m., as currently estimated, we will discuss potential ethical issues and inequitable conduct hazards that may arise during an IP due diligence investigation. The concluding sessions of the course cover risk-management issues that provide invaluable, suggestions for contractual practical
considerations, including effective uses of representations and warranties. Topics discussed in the course apply both to investigating a targets patent portfolio and to preparing a portfolio for suitors. Youll receive a thorough course book, chock full of notes, examples, and case law. The facultypartners at Finneganare all patent attorneys with extensive experience in due diligence investigations. The panel has many years of experience in IP practice and
expertise in several different areas of technology. Throughout the course, the faculty shares interesting war stories, observations, and practical tips for conducting the investigation in a comprehensive and efficient manner. In short, the knowledge youll gain from this course will enable you to avoid due diligence pitfalls, while more effectively assessing and managing risks endemic in business transactions involving complex IP rights and issues. G
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Post-Grant Patent Practice: Review and Reexamination

15.0 Hours
Course Faculty The instructors are experienced at representing both patent owners and accused infringers in review proceedings and reexaminations. They have taught the Post-Grant Patent Practice course for five years and continuously update their treatise and slides to provide practical advice based on current cases involving adversarial post-grant matters. They were actively involved in bar associations efforts to help the PTO design and implement the new review proceedings created by the America Invents Act (AIA). They have written widely on review and reexamination topics for Intellectual Property Today.
KEVIN B. LAURENCE OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT ALEXANDRIA, VA
MATTHEW C. PHILLIPS RENAISSANCE IP LAW GROUP LLP PORTLAND, OR
Course Description Why Should You Take This Course? The battleground of patent validity is shifting from courts to the PTO. Review proceedings, including post-grant review and inter partes review, are powerful, fast-track trials before the Patent Trial and Appeal Board. Review proceedings offer several advantages over validity challenges in a court proceeding including cost, predictability, effectiveness, speed, and the ability to pursue strategies that would not be feasible in court. This course explores these factors and provides training for participating in review proceedings. Reexamination remains popular either alone or alongside court battles. The PTOs Central Reexamination Unit provides a forum that can result in many favorable outcomes, at a small fraction of the cost of litigation. Whatever side of the battle you are on, you must know how to engage in the new battlefields called review as well as the existing battlefield called reexamination. he first day of this two-and-a-half-day course focuses on ex parte reexamination and also addresses inter partes reexamination. The second day is dedicated to inter partes review. Topics covered in the final half day include post-grant review, covered business method patent review, and ethical issues related to review proceedings and reexamination. The course covers strategies, tactics, best practices and case studies for review and reexamination. The course is for both patent practitioners who appear before the PTO in these proceedings, as well as litigators who must deal with the increasingly common role of PTO proceedings in the context of disputes.
Comments from previous attendees: This course provides a practical framework for using post-grant tools from both the perspective of the owner and challenger, and insight on how they work together. Matt Rabdau IP Counsel, Fluke Corporation October 2012 attendee The materials are outstanding. I will use as reference materials in the future. Lecturers were wide open to questions and very responsive. Interspersing of war stories and examples kept the presentation interesting. Charles Burpee Warner Norcross & Judd LLP October 2009 attendee
Ten years ago courts were essentially the sole arbiters of patent validity. About 5-6 years ago, reexamination suddenly emerged as a popular means for challenging patents, either alone or alongside court battles. The reasons for that shift were simple: Would you rather bring your validity attack before an experienced patent examiner with technical expertise in the PTOs Central Reexamination Unit where claims are given their broadest reasonable interpretation and do not enjoy a presumption of validity, or a jury in the Eastern District of Texas? The answer becomes all the more obvious when one considers that a reexamination can cancel claims, eliminate liability for past infringement, create intervening rights to continue accused infringement in the future, open up designaround opportunities, create a more favorable prosecution history, defeat a charge of willful infringement, help avoid an injunction, bolster an inequitable conduct defense, and sometimes enable a stay of expensive litigation. All of this can be achieved at a small fraction of the cost of
litigation or advantageously deployed in conjunction with litigation. The Patent Trial and Appeal Board has shifted the balance in favor of the PTO as the patent validity battlefield of the future by creating new more powerful, fast-track, litigation-like review proceedings, including post-grant review and inter partes review. Inter partes review provides an opportunity to challenge the validity of a patent twice: first at the PTO based on printed publications and subsequently in litigation based on other available grounds. Stays are being granted liberally when inter partes reviews are filed in light of the statutory requirement for rapid completion of these new proceedings. As a result, validity challenges are proceeding in serial fashion. In the first phase of a bifurcated validity challenge, complicated arguments regarding the prior art can be rapidly resolved by trained specialists at the PTO, whereas in the second phase, less technical arguments regarding commercial activity or other invalidating grounds can be resolved by a judge or jury. This sequential approach can simplify claim construction and narrow issues for an infringement portion of the litigation, and thus may reduce overall costs. Lead counsel in an inter partes review proceeding must be a registered patent attorney, but it is possible for litigation counsel to participate in the proceeding even if the litigation counsel is not registered. Integrating the inter partes review and litigation teams can provide a smooth transition to the litigation upon completion of the review proceeding. Reexamination has often been referred to as a second bite at the apple, but the bite size provided by inter partes review is more on par with that of litigation due to its provisions for limited discovery. The comparative weakness of ex parte reexamination is offset by its absence of estoppel implications. Indeed, the deepest concerns regarding inter partes review often
focus on its legal estoppel provisions that prevent a challenger who is unsuccessful in an inter partes review from attacking a claim in any forum based on other printed prior art publications. This concern overlooks the advantages of this new proceeding and does not acknowledge that failure to invalidate a claim in litigation results in much harsher estoppel. The estoppel of inter partes review will have a considerably smaller scope than the estoppel of a failed district court challenge. In light of the complexity of many prior art arguments and the benefits of the serial validity and infringement cases, consideration of a challenge at the PTO should not be a back-up plan, as reexamination often is. Rather, inter partes review should be used prior to or concurrently with litigation. For patent challengers, the course provides training to: Analyze the advantages and disadvantages of review and reexamination compared to litigation Make well-informed choices between review proceedings and reexamination Understand the critical role of review and reexamination in the context of a dispute and develop strategies based on anticipated or concurrent litigation Appreciate estoppel implications both official and unofficial of review and reexamination Utilize review and reexamination to obtain a stay or other benefits in related litigation Unravel the AIAs review statutes and decipher the PTOs review rules to really understand how reviews are conducted Prepare a petition for review or a request for reexamination that complies with all requirements and gets granted Learn what the reexamination statistics really mean
Advantageously utilize the different standards applied for claim interpretation at the PTO and claim construction in litigation as well as the differing burdens of proof Recognize possible changes to the construction of the claims in the litigation based on the review or reexamination that opens up design-around opportunities, creates a more favorable prosecution history for the purpose of claim construction, or impacts estoppel theories Create intervening rights that eliminate liability for past infringement or allow continuation of accused infringement in the future Tactically use serial ex parte reexamination requests and protests in reissue Correctly and strategically use petitions and declarations Understand the repercussions that review and reexamination can have on settlement The course balances the perspectives of patent challengers and patent owners so the above items are also presented from the view of the patent owner. Additionally, the course provides training for patent owners to: Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims or from mere argument regarding claim scope Select information to be disclosed to the PTO from concurrent litigation or other PTO proceedings Understand the timing of events in all postissuance PTO proceedings so that you are not caught off guard Navigate the maze of review and reexamination procedures to avoid unfortunately common mistakes G
elax with a refreshing beverage, while you take in the beautiful palm tree views.
Prevailing at the ITC: Managing a Successful Section 337 Investigation

Course Faculty
12.0 Hours
All three faculty members have extensive experience in patent litigation before the U.S. International Trade Commission (ITC).
G NEW
COURSE
Washington, DC August 6-7, 2013 (Tues-Wed) Hilton Crystal City (Arlington, VA) 8:30 a.m. 11:45 a.m. and 1:00 p.m. 4:15 p.m.
P. ANDREW RILEY CHRISTINE LEHMAN ANTHONY DEL MONACO
G NEW COURSE
Why Should You Take This Course? This course will demystify Section 337 investigations for those who are unfamiliar with its unique requirements. The instructors will take you through each phase of an investigation, from the ITCs pre-filing requirements through petitions for review and review by the Commission.
Course Description oday, many of the most high-profile IP disputes are litigated at the ITC. Litigation before the ITC is dramatically different from litigation before U.S. district courts. This course provides a comprehensive overview of ITC practice and procedure; highlighting the differences between district court and ITC patent litigation. No matter which side of a proceeding you are on, the faculty will provide a detailed discussion of the unique requirements and challenges facing all parties engaged in litigation. This course will equip practitioners with the necessary insight into ITC practice to effectively navigate this complex and fast-paced forum.
Every phase of ITC practice will be covered, including: Pre-filing consultation requirements Preparing and filing an ITC complaint Legal ethics Discovery and claim construction Importation requirements and domestic industry
Who Should Take This Course? This course is designed for corporate counsel who have or may have supervisory responsibilities for an ITC investigation and attorneys in private practice who seek a detailed understanding of ITC practice and procedure. Individuals may be on a new or intermediate level of understanding of how the ITC works.
Hearings before an ITC administrative law judge Pre- and post-hearing briefing Settlement and consent orders The public interest factors Commission review ITC Remedies
Course Materials You will receive a course book, thoroughly researched and updated by the instructors from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, full of case law, ITC rules, and examples. The course materials include space for note-taking and cross-referencing and will prove a valuable resource. G
itness the majesty of our nations Capitol at night after class for a breathtaking experience.
Procuring and Enforcing Business Method and Other Software-Based Patents After Bilski and BMC
15.0 Hours
Course Faculty The faculty for this course has prosecuted scores of software-related patents, for business methods and more traditional computer-based technical subject matters, over a collective USPTO experience of more than 60 years. Each has also been involved in litigation and licensing of softwarerelated patents. They can provide a wide range of viewpoints from which to consider strategies for procuring, exploiting and enforcing software patents.
ALDO NOTO
ANDREWS KURTH LLP WASHINGTON, DC
STUART HEMPHILL
DORSEY & WHITNEY LLP MINNEAPOLIS, MN
DEVAN PADMANABHAN
WINTHROP & WEINSTINE MINNEAPOLIS, MN
Course Description Why Should You Take This Course?

Director Kappos has recently stated that patents on software are every bit as well deserved as patents on air flight, electric bulbs and such more traditional inventions. At the same time, he acknowledges past, often inadequate and inconsistent examination of software patents, but points out improvements at the USPTO for increasing examination quality. This is a critical time to get an important update on software patent law, given: The impact of the America Invents Act (AIA). The need to understand the post-Bilski decisions that attempt to apply its principles (Research Corporation; Ultramercial; Prometheus; et al.). The decisions analyzing infringement when computer-based methods or other activity span borders (Research in Motion; Transocean). The decisions finding no infringement when multiple actors are involved in completing the infringement (Muniauction; Akamai). Patent damages in software cases have been impacted by the decisions of Judges Posner and Alsup. The need to understand how the USPTO and courts are using indefiniteness as a basis for rejection or invalidity of software claims.
his course addresses the difficult and sophisticated task of how best to claim, prosecute, and litigate software-based inventions in their rich variety so as to have their patents held not invalid and infringed by the Federal Circuit. But that rich variety requires a variety of disparate claiming, specification drafting, prosecution, and litigating techniques.
The America Invents Act (AIA) impacts software patents in general and business method patents in particular. Specifically, a new inter partes review proceeding is available during litigation for defendants to challenge certain business method patents at the USPTO on a wide variety of invalidity grounds.
The broad spectrum of available software patent protection opportunities that appeared available after State Street Bank and AT&T v. Excel was questioned in the Bilski decisions. In its Bilski decision, the CAFC retreated from the useful, concrete and tangible result analysis to tied to a particular machine or apparatus or transforms a particular article tests. The Supreme Court found this machine-ortransformation test useful but too narrow. It fell back on general principles of abstractness. It also declined to exclude all business methods from patentability, but it seemed to invite their close scrutiny. Courts as well as the USPTO continue to struggle with the application of the Supreme Court's decision and the CAFC decision it largely affirmed. Practitioners need to understand the signposts left by the Bilski decisions and those that attempt to apply their guidance.
Software-based inventions face another issue. Recent cases have suggested that infringement may be avoided when infringing activity crosses borders or multiple parties are involved in the acts or elements comprising infringement of a claim. The doctrine of joint infringement (a/k/adivided infringement) as developed in BMC Resources, Inc. v. Paymentech, Muniauction Inc. v. Thomson Corp. and other cases poses particular problems for proving infringement as more computer-based inventions use processors, storage and specialized data processing services of others, sometimes located in the cloud. Using resources in the cloud can involve multiple actors and jurisdictions. The course and text address why different software applications (e.g., Internet-related software) require special claim drafting,
prosecution or litigation techniques. Claim styles and limitations designed to meet the somewhat unclear post- Bilski 101 standards are discussed. This course also explores the countercurrents arising from concern about the quality of some business method patents and from the open source movement. Legal ethics in the context of duty of disclosure under 37 CFR 1.56 and USPTO conflict of interest issues will be presented from 9:00 to 11:00 a.m. on the third day, as currently estimated.
Comments from previous attendees: Speakers were awesome, articulate, organized, knowledgeable and friendly. The material covered was very focused and practical. Thank you! Examples of claim types were great!
Course Materials At the Course, attendees will receive a comprehensive text and slides, written by the distinguished faculty. G
hether you go for a swim or just relax in the sun with a good book, you will feel refreshed after spending time at the pool.
Strategic Patent Portfolio Management in the Era of Legal Chaos, First-to-File and Budget Demands
Course Faculty
6.0 Hours
Washington, DC August 6, 2013 (Tues) Hilton Crystal City (Arlington, VA) 8:30 a.m. 11:45 p.m. and 1:00 p.m. 4:15 p.m.
J. Matthew Buchanan has helped numerous startup and established companies design and implement effective portfolio development and management systems. He has developed a thriving consulting practice in the field that complements his active U.S. and international patent preparation and prosecution practice.
G NEW
COURSE

J. MATTHEW BUCHANAN
G NEW COURSE
Course Description Why Should You Take This Course? The course provides a detailed overview of effective corporate portfolio development and management systems, from invention capture to foreign filing and maintenance fee decisions. In-house patent counsel and other professionals responsible for designing, implementing and/or managing systems for capturing, reviewing and evaluating inventions and patents will gain practical knowledge that will aid in the designing or revising of their own corporate systems. Attorneys in private practice that help clients at a systems-level will also find the course beneficial.
BUCHANAN NIPPER LLC PERRYSBURG, OH
he reign of Federal Circuit chaos continues and now weve jumped into the brave new world of first-to-file. Economic realities have served as a backdrop to this upheaval, placing heightened budget demands on patent work across all industries like never before. Despite this ushering in of unprecedented change over the last several years, most organizations continue to live with antiquated or non-existent portfolio development and management systems. While they still value and desire strong patent protection in this strange new world filings continue to reach record levels organizations now require faster delivery of higher quality applications for less. Meeting these three objectives is proving difficult for many, though, as simple demands that outside counsel do more for less reach their limit.
Patent professionals in portfolio-building organizations stand at a crossroads, then, having to decide whether to accept a current system that addresses less than all of these objectives or to begin rethinking the tools and processes they use in the building of their portfolios. This course provides practical knowledge that enables the patent professional to set the organization down the second path, toward implementation of a comprehensive, systems-based approach to portfolio development and management that is designed for the realities of the modern patent world. The pressures of case law chaos, first-to-file and budget demands require the implementation of a portfolio development and management system that is strategic,
timely and efficient. Living with a corporate system designed for yesteryear will only allow an organization to respond to less than all of these pressures and, over time, will necessarily produce a less valuable portfolio. The current patent environment demands a rethinking of everything from idea capture and documentation to review and evaluation for filing, and from filing strategies to expectations placed on outside counsel. The course provides a detailed overview of a model system and examples of its implementation in various types of organizations. Attendees will receive valuable and practical knowledge that can be put to use while designing new or modifying existing systems in their own organization. Specific topics discussed include:
Forms for documenting ideas Guidelines for deciding whether protection is desirable Patent committee structure, make-up and responsibilities Application filing strategies, including optimized chaining of provisional applications
Expectations to place on outside counsel Idea recycling Portfolio review Leveraging the system through knowledge dissemination within the organization.
Course Materials Attendees will receive a comprehensive set of slides. G
he Hilton Crystal City is only a few miles from the offices of the USPTO. Combine your August training with meetings at the USPTO to conduct business.
When, Why and How to Effectively Appeal to the USPTO Patent Trial and Appeal Board
6 Hours
Huntington Beach, CA October 19, 2013 (Sat) Hyatt Regency Huntington Beach Resort and Spa 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m.
Course Faculty This definitive course on appeals practice before the Board was prepared and will be presented by William F. Smith, who in 2005 completed 19 years of distinguished service as an Administrative Patent Judge on the Board. Bill brings to PRG the wisdom and insights in effective practice before the Board that can only be provided by one who served so long and so effectively as a Board member. Bill will be assisted by his colleague, Joseph Lucci, a seasoned patent litigator who specializes in patent litigation, prosecution, interferences and client counseling.
Registration deadline: September 25, 2013

BILL SMITH JOSEPH LUCCI
WOODCOCK WASHBURN ATLANTA, GA PHILADELPHIA, PA
Why Should You Take This Course? The Appeals course covers everything that patent attorneys and patent agents need to know about the appeals process based on the latest rules, including determining whether or not it is prudent to file an appeal, developing an effective brief to the Board, and responding to Office actions throughout the process. In its debut presentation in October 2008, this course earned a perfect 4.0 overall course rating and a combined faculty rating of 3.96 and it has continued to received exemplary reviews in all subsequent offerings.
Course Description hile the Kappos administration brought welcome change to the USPTO, the fact remains that applicants can face significant hurdles in prosecuting patent applications, as seen from the over 26,000 ex parte appeals pending before the Board. In many cases, appeals to the Patent Trial and Appeal Board are required in order to provide applicants with the full scope of patent protection to which they are entitled. This, in turn, makes it necessary for the patent bar to become fully confident and comfortable in prosecuting appeals under the USPTOs new appeals rules that became effective in 2012. It should also be noted that no patent agent has standing to appeal to the Federal Circuit, and very few patent attorneys have occasion to do so. But every patent attorney and agent has standing to appeal to the Patent Trial and Appeal Board, and almost all do so frequently in their careers.
Comments from previous attendees: Simplifies a complex matter. Great exposition of new Rules and their impact. Strategic observations about what works. Speakers didnt waste time on dry recitation of rules we can read on our own time.
Among the subjects covered in the course are the following: Determining when, during the prosecution of the application, it is prudent to file an RCE or an appeal, considering the nature of the examiners rejection(s) and the legal and technological issues involved (e.g., identifying and appealing inappropriate obviousness rejections in the post-KSR USPTO). How to respond to Office actions in a way that will enhance success before the Board. Claim construction by the Board. The Boards treatment of Rule 131 and 132 evidence. Pre-appeal brief conference requirements and strategy under the USPTOs new rules. Analysis of the new rules governing ex parte appeals to the Board
How to write a compliant and effective brief to the Board, including strategies in presenting facts, arguments and authorities. A detailed analysis of each of the required parts of a brief. How to deal with the new presumption of correctness of the examiners rejection(s), including how to establish examiner error. Taking apart the examiners answer and writing an effective reply brief.
Making an effective oral argument at the hearing. Reviewing and responding to the Boards decision, including how to respond to both stated and unstated new grounds of rejection. Further judicial review, i.e., to the CAFC or the U.S. District Court. Patent term adjustment issues how winning or losing the appeal affects your patent term in significantly different ways.
Course Materials Attendees will receive a text and accompanying set of slides. G
he spa is a perfect place to escape your worries and dedicate a few hours to the ultimate in relaxation.
PRGs Fall Hotel Hyatt Regency Huntington Beach Resort and Spa Huntington Beach, CA October 16-22, 2013
21500 Pacific Coast Highway Huntington Beach, CA 92648
PRGs 2013 Annual Fall Advanced Courses Program will be held at the lavish Hyatt Regency Huntington Beach Resort and Spa in Huntington Beach, CA
Receptions for Attendees and Faculty: PRG receptions provide an opportunity for networking, plus delicious, complimentary hors doeuvres and beverages on the first evenings of class: Wednesday, October 16 and Sunday, October 20. Spouses, children and guests of attendees and faculty are welcome and are certain to have an enjoyable time. Transportation: The Hyatt Regency Huntington Beach Resort and Spa is located approximately 13 miles from Orange County Airport (SNA); 18 miles from Long Beach Airport (LGB); and 38 miles from Los Angeles International Airport (LAX). The Hyatt Regency Grand Cypress offers on-site valet parking and self-parking is available across the street at Huntington Beach City Parking.
An Elegant Oasis!
he Hyatt Regency Huntington Beach Resort and Spa is a beautiful oceanfront property located off California's famed Pacific Coast Highway. This luxurious resort features Spanish-inspired architecture, breathtaking views of the Pacific ocean, and direct beach access via a pedestrian bridge. The resort features 8 on-site dining options, including the AAA Four-Diamond The Californian; Slyders Water Park; the full-service Pacific Waters Spa; Game Zone arcade and play room; surfing lessons; and a lagoon-style swimming pool. Off-site attractions include Disneyland, Knotts Berry Farm, The Aquarium of the Pacific, Catalina Island, the Marconi Auto Museum, the Queen Mary, and the International Surfing Museum.
Reservations: 888-421-1442 or 714-698-1234 For information and to make your room reservation online, please go to www.patentresources.com/HotelOverview.aspx and click on the Hotel Information link for Hyatt Regency Huntington Beach Resort and Spa. Room reservations must be made by September 25, 2013. When making your reservation, be sure to identify yourself as a Patent Resources Group attendee to obtain the special PRG rate. Room rate: The sleeping room rate available to PRG attendees is only $245.00 per night, single or double, plus tax. This rate is 30% less than the Resorts standard rate during this period!
You'll also enjoy complimentary in-room highspeed Internet access; a full-service, 24-hour business center; gift shop; and concierge. For more information about the Hyatt Regency Huntington Beach Resort and Spa, go to: http://www.huntingtonbeach.hyatt.com
Hyatt Regency Huntington Beach Resort and Spa REGISTRATION Huntington Beach, CA October 16-22, 2013
Three-Day Courses:
Tuition for each three-day course is $2,195 through August 26, 2013 and $2,295 after that date October 16-18 (Wed-Fri)
Art & Science of Patent Searching
One-Day Courses:
Tuition for the one-day courses is $995. (only $795 if you also register for a 3-day course at this program) October 19, 2013 (Sat)
America Invents Act: Monumental
REGISTRATION OPTIONS: Mail or Overnight: 1725 Jamieson Avenue Alexandria, VA 22314 FAX: (703) 892-4510 ONLINE: www.patentresources.com You may register online or by fax, mail or courier. You may submit tuition either by check, payable to Patent Resources Group, Inc., or by credit card (charges are authorized by your completion of this form). The course tuition does not include hotel accommodations or meals, but does include all instructional materials, and morning and afternoon refreshments, as well as PRGs reception-cocktail party.
Early Registration Deadline: August 26, 2013 Final Registration Deadline: September 25, 2013
Patentability, Validity & Infringement

Art & Science of Patent Searching
Changes, the Consequences and the Unanswered Questions

When, Why and How to Effectively Appeal to
and Optional Patent Searching Workshop (combined course and workshop is $2,590 through Aug. 26, 2013 and $2,690 after that date)
Comprehensive PCT Practice: How to
the USPTO Patent Trial and Appeal Board
Master Its Challenges

Drafting Patent License Agreements Federal Circuit Law (2011-2013) Post-Grant Patent Practice: Review
Tel: 703-682-4860 Fax: 703-892-4510 www.patentresources.com
For information about registration deadlines; cancellation, transfer and substitution privileges; CLE; and other details, go to: www.patentresources.com
Brochure Code: A13M2
and Reexamination
I am an ACTIVE member of a State Bar that requires mandatory CLE hours. My State(s) & my Bar ID number(s) are:
1. __________ _________________________ STATE ID NO.
2. ___________ STATE
______________________ ID NO.
October 20-22, 2013 (Sun-Tues)

Chemical Patent Practice Crafting and Drafting Winning Patents Designing Around Valid U.S. Patents Patent Due Diligence in the AIA Era Procuring and Enforcing Business
MR. DR. MS. PROF.
Name ___________________________________________ Title ________________________ Tel _____________________________________________ Fax ________________________ email ________________________________________________________________________ Organization ______________________________________ Suite or Mail Stop No. ___________
ORG. _________________________________________________________________ Street Address PLEASE PRINT
HOME
Method and Other Software-Based Patents After Bilski and BMC
City/State ________________________________________ Zip Code ____________________
Charge $______________________ to: VISA MasterCard American Express

Corporate Card Personal Card Government Card
PRINT Name of Cardholder SIGNATURE of Cardholder

If the credit card billing address is not the same as on this form, enter the billing address here:
Loyalty Program members save $200 on tuition for every course at this Program!
Corporate Customer Code (if applicable) ___________________
Credit Card # _______________________________ Exp. ________/__________
Please note that the faculty members listed for each course are subject to change prior to the actual course date.
Hilton Crystal City REGISTRATION Washington, DC (Arlington, VA) August 5-7, 2013
One-Day Courses:
Tuition for each one-day course is $995. (the AIA course is only $795 if you also register for the 2-day course at this program) August 5, 2013 (Mon) America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions August 6, 2013 (Tues)

Two-Day Course:
Tuition for the two-day course is $1,995. August 6-7, 2013 (Tues-Wed)
REGISTRATION OPTIONS: Mail or Overnight: 1725 Jamieson Avenue Alexandria, VA 22314 FAX: (703) 892-4510 ONLINE: www.patentresources.com You may register online or by fax, mail or courier. You may submit tuition either by check, payable to Patent Resources Group, Inc., or by credit card (charges are authorized by your completion of this form). The course tuition does not include hotel accommodations or meals, but does include all instructional materials, and morning and afternoon refreshments.
GNEW COURSE Prevailing at the ITC:

Managing a Successful Section 337 Investigation
GNEW COURSE Strategic Patent Portfolio Management in the Era of Legal Chaos, First-to-File and Budget Demands
A Convenient and Economical Venue
Tel: 703-682-4860 Fax: 703-892-4510 www.patentresources.com
Registration Deadline: July 15, 2013
Hilton Crystal City 2399 Jefferson Davis Highway Arlington, VA 22202 703-418-6800
ocated in close proximity to Reagan National Airport (DCA), the Hilton Crystal City is a well-equipped hotel offering comfortable amenities in a convenient location. The historical and cultural attractions of the DC Metro area are within your reach via the Crystal City Metro, and there are numerous dining establishments within an easy walk. The hotel offers a 24-hour fitness center; onsite dining at Bistro Ondine and Clarks Lobby; an indoor pool; and a complimentary shuttle to Reagan National Airport as well as to distances within a 3-5 mile radius.
For information about registration deadlines; cancellation, transfer and substitution privileges; CLE; and other details, go to: www.patentresources.com
Brochure Code: A13M2
I am an ACTIVE member of a State Bar that requires mandatory CLE hours. My State(s) & my Bar ID number(s) are:
1. __________ _________________________ STATE ID NO.

MR. DR. MS. PROF.
2. ___________ STATE
______________________ ID NO.
Name ___________________________________________ Title ________________________ Tel _____________________________________________ Fax ________________________ email ________________________________________________________________________ Organization ______________________________________ Suite or Mail Stop No. ___________
ORG. _________________________________________________________________ Street Address PLEASE PRINT
HOME
City/State ________________________________________ Zip Code ____________________
The Hilton Crystal City is located next to Reagan National Airport (DCA) and offers complimentary shuttle service to/from the Airport. Dulles International Airport (IAD) is approximately 30 miles from the hotel, and the Baltimore-Washington International Airport (BWI) is roughly 36 miles away. Room rate for PRG attendees: $179.00 per night, single or double, plus tax.
Charge $______________________ to: VISA MasterCard American Express

Corporate Card Personal Card Government Card
PRINT Name of Cardholder SIGNATURE of Cardholder

If the credit card billing address is not the same as on this form, enter the billing address here:
Corporate Customer Code (if applicable) ___________________
Credit Card # _______________________________ Exp. ________/__________
Loyalty Program members SAVE $200 on tuition for every course at this Program!
Bring Your Support Team With You to Washington, DC in August!

PRG will be offering a special course for patent support professionals at the same time and same location as our 2013 Summer Advanced Courses Program.
Patent Administration: A Foundation for Success is a complete and thorough 2.5-day certificate course designed to provide patent prosecution support professionals with: A firm understanding of the fundamentals of U.S. patent law, including changes due to the America Invents Act (AIA) Practical tips and advice that can be applied on a daily basis to save time and ensure success in interactions with the USPTO An introduction to Patent Cooperation Treaty (PCT) practice and filing A detailed discussion of patent research and document retrieval Tuition for this popular course addressing the needs of patent paralegals, secretaries, and administrators is only $795.00! Let your support team know about this opportunity so that they can get the training they need to be leaders in effective patent administration!
August 5-7, 2013 Hilton Crystal City Washington, DC (Arlington, VA)
Register online by July 26, 2013 at www.patentresources.com!

THE CHOICE
OF
EVERY GENERATION
OF
PATENT ATTORNEYS SINCE 1969.
June 17-21, 2013 Patent Bar Review Course Boston, MA The Colonnade Hotel
August 5-7, 2013 Patent Administration: A Foundation for Success Washington, DC (Arlington, VA) Hilton Crystal City
September 23-27, 2013 Patent Bar Review Course New York, NY Executive Conference Center
July 9-12, 2013 Winning Patents Workshop Pasadena, CA Hilton Pasadena
August 5-7, 2013 Annual Summer Program Advanced Courses in Patent Law Washington, DC (Arlington, VA) Hilton Crystal City
October 16-22, 2013 Annual Fall Program Advanced Courses in Patent Law Huntington Beach, CA Hyatt Regency Huntington Beach Resort and Spa
July 23-26, 2013 Winning Patents Workshop Washington, DC (Alexandria, VA) The Westin Alexandria
September 23-25, 2013 Patent Administration: A Foundation for Success New York, NY Executive Conference Center
November 4-8, 2013 Patent Bar Review Course San Francisco, CA Executive Conference Center
Register online now at www.patentresources.com

atent Resources Group, the choice of every generation of patent attorneys since 1969, now offers customized ON-SITE training for selected courses on a negotiated basis!
PRG is currently offering these courses* ON-SITE:

Art and Science of Patent Searching: Patentability, Validity & Infringement This course comprehensively teaches how to conduct a professional patent search. The materials and content will be understood by anyone, from the inexperienced to advanced practitioners. The course is perfect for patent attorneys and agents, inventors, paralegals, or research managers anyone who will be involved in conducting searches or commissioning searches. America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions The content of this course was created with the goal of assisting patent attorneys and agents in fully understanding the AIA, its consequences, nuances, ambiguities, and unresolved issues created by the new statutory language. Practitioners must know the new law, but must also be able to determine when the AIA applies and when pre-AIA law applies.
This is the perfect option for corporations that have 10 or more employees who need the same training. We'll come to your location and will customize the content as needed to meet your specific needs. If you prefer, we can also offer these courses remotely through webconferencing or videoconferencing. Contact SVP-Sales Ted Klekman at (916) 404-3908 to learn more.
*Interested in having other courses taught on-site at your location? Ask us!

1 7 2 5 J A M I E S ON AV E N U E ALE XANDRIA, VA 22314
Presorted Standard U.S. Postage PAID Graphics East, Inc.
IN PATENT LAW ANNUAL SUMMER AND FALL PROGRAMS

Register today at www.patentresources.com!
Join us in the Nation's Capital!
Hilton Crystal City Washington, DC (Arlington, VA) August 5-7, 2013
Unparalleled Courses at an Amazing Venue!

Hyatt Regency Huntington Beach Resort and Spa Huntington Beach, CA October 16-22, 2013
Patent Resources Group provides the industry's leading patent law education programs. The company has taught patent law and related courses to 40,000 patent attorneys, agents, engineers and scientists since 1969.
A13M2

PRG Magalog For Summer and Fall 2013 Advanced Courses Programs

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PRG Magalog For Summer and Fall 2013 Advanced Courses Programs

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PATENT RESOURCES GROUP

IN PATENT LAW ANNUAL SUMMER AND FALL PROGRAMS

Hilton Crystal City Washington, DC August 5-7, 2013

PATENT ATTORNEYS SINCE 1969.

Register now at www.patentresources.com

PRGs 2013 Annual Summer and Fall Programs in Patent Law

Register soon spaces will fill quickly!

PRG THE CHOICE OF EVERY GENERATION OF PATENT ATTORNEYS SINCE 1969.

About PRGs Loyalty Program

Hyatt Regency Huntington Beach Resort and Spa

Register by August 26 for Lowest Fall Tuition!

Comprehensive PCT Practice: How to Master Its Challenges

Drafting Patent License Agreements Federal Circuit Law (2011-2013)

Post-Grant Patent Practice: Review and Reexamination

Three-Day Courses: October 20-22, 2013 (Sun-Tues) Chemical Patent Practice

Crafting and Drafting Winning Patents

Designing Around Valid U.S. Patents

Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Hilton Crystal City

Offered at Both the Summer and Fall Programs!

Registration deadline: September 25, 2013

Registration deadline: July 15, 2013

Art and Science of Patent Searching Patentability, Validity & Infringement

LANDON IP, INC. ALEXANDRIA, VIRGINIA

his course comprehensively teaches how to conduct a professional patent search.

Optional Patent Searching Workshop

elax in the sun by the lagoonstyle swimming pool.

Chemical Patent Practice

RONA NARDONE TEVA PHARMACEUTICALS FRAZER, PA

KATHRYN SANCHEZ DUPONT WILMINGTON, DE

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC

Comprehensive PCT Practice: How to Master Its Challenges

aspects of PCT matters.

Crafting & Drafting Winning Patents

Designing Around Valid U.S. Patents

Drafting Patent License Agreements

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC

Federal Circuit Law (2011-2013)

INCLUDING COMMENTARY on the America Invents Act

Patent Due Diligence in the AIA Era

Post-Grant Patent Practice: Review and Reexamination

KEVIN B. LAURENCE OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT ALEXANDRIA, VA

MATTHEW C. PHILLIPS RENAISSANCE IP LAW GROUP LLP PORTLAND, OR

Prevailing at the ITC: Managing a Successful Section 337 Investigation

Registration deadline: July 15, 2013

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC

Course Description Why Should You Take This Course?

Registration deadline: July 15, 2013

BUCHANAN NIPPER LLC PERRYSBURG, OH

Course Materials Attendees will receive a comprehensive set of slides. G

Registration deadline: September 25, 2013

Patentability, Validity & Infringement

Changes, the Consequences and the Unanswered Questions

the USPTO Patent Trial and Appeal Board

PATENT RESOURCES GROUP

Master Its Challenges

Tel: 703-682-4860 Fax: 703-892-4510 www.patentresources.com

1. __________ _________________________ STATE ID NO.

October 20-22, 2013 (Sun-Tues)

MR. DR. MS. PROF.

Method and Other Software-Based Patents After Bilski and BMC

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