prg spring 2014 advanced courses program magalog

ANNUAL SPRING PROGRAM

PATENT RESOURCES GROUP®

Register now at www.patentresources.com

THE CHOICE OF EVERY GENERATION OF PATENT ATTORNEYS SINCE 1969.

Spring ProgramHyatt Regency Coconut Point Resort and SpaBonita Springs, FL • March 30-April 5, 2014

• Choose from 15 of the best advanced patent law courses. See page 3.

• Be sure to register for one of our 2 brand new one-day courses and our expanded/updatedone-day course on the impacts of the AIA. See page 3.

• Take advantage of our amazing room rate, available only to PRG attendees! See page 36.

• Enjoy a one-of-a-kind venue with many on-site activities. See page 36.

Join Us in Floridafor the BEST

Advanced PatentTraining in the

World!

IN PATENT LAW

15GREAT

COURSES!

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2 www.patentresources.com

atent Resources Group's Loyalty Program provides preferential pricing at our Advanced CoursesPrograms. If you were a paid attendee at any PRG course in 2013, you are automatically a loyaltymember for 2014 and will be entitled to special pricing when you attend any courses at our 2014

Spring or Fall Advanced Courses Programs! And after being a paid attendee at any PRG course in 2014, you’llautomatically be eligible for Loyalty Program benefits for the rest of 2014 and for 2015. If you didn't attendany PRG courses in 2013, your 2014 loyalty program benefits will kick in after your first 2014 course — so ifyou sign up for multiple courses at the Spring 2014 Advanced Courses program, you'll pay full price for thefirst course and get loyalty pricing for the other courses at this Program. Loyalty Program members save $200on tuition for each 3-day Advanced Course and $100 for each 1-day course.

About PRG’s Loyalty Program

PRG’s 2014 Annual Spring Program

P

— in Patent Law

For over 40 years, Patent Resources Group has been the nation’s leading educator of patentprofessionals, providing attorneys, agents, engineers, and scientists from around the world withcomprehensive courses and publications that set the industry standard for patent education.

WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN FLORIDA IN SPRING 2014?BECAUSE PRG’S ADVANCED COURSES PROVIDE AN EDUCATIONAL OPPORTUNITY THATYOU SIMPLY CAN'T GET AT ANY OTHER SINGLE PROGRAM. OUR COURSES:

• Will arm you to deal with the complexities of the America Invents Act – the final changesresulting from the America Invents Act (AIA) took effect in March 2013. However, the effects of thislandmark legislation will be impacting all aspects of patent practice for years to come. Our Spring 2014Program features a significantly revised and expanded one-day course on the AIA that focuses onunderstanding its implications going forward. In addition, all of our returning courses have been updated asneeded to reflect the ongoing impacts of the AIA.

• Provide an amazing value – if you register for your Spring Program courses by February 10,2014, you'll pay the same tuition rates that we’ve been charging since 2005! And if you come to ourprograms every year, you’ll continue to benefit from our special Loyalty Program discounts for our AdvancedCourses (see below).

• Go beyond the basics, showing how to apply the law to real-world intellectual property issues and tomake calculated legal and business decisions.

• Give you practical insights that you can apply immediately when you get back to the office.

• Offer the CLE credits you need

• Are an investment in your practice or your company,increasing both your ability to successfully prosecute patent lawand the value you bring to your employer.

• Provide an unparalleled opportunity for networking andexchanging 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.

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www.patentresources.com 3

Hyatt Regency Coconut Point Resort and SpaBONITA SPRINGS, FL • MARCH 30-APRIL 5, 2014

• 15 advanced patent law coursesare available for the 2014 AnnualSpring Advanced Courses Program.

• Tuition for each Spring three-daycourse is $2,195 through February 10, 2014 and $2,295after that date.

• Combined tuition for the SpringPatent Searching Course andWorkshop is $2,590 throughFebruary 10, 2014 and $2,690after that date.

• Tuition for each Spring one-daycourse is $995.

Three-Day Courses: March 30-April 1, 2014 (Sun-Tues)

Art & Science of Patent Searching — Patentability, Validity& Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 6Faculty: Brian Thurmond and Jonathan Skovholt

Chemical Patent Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8Faculty: Tom Irving, Jill MacAlpine, Deborah Herzfeld, Paul Browning, Kathryn Sanchez, and Rona Nardone

“Designing Around” Valid U.S. Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12Faculty: Patrick Burns, John Pinkerton, and Patricia Prior

Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman

Pharma & Biotech Strategies for Patent Prosecution, Hatch-Waxman & Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26Faculty: Janis Fraser, Mark Ellinger, Terry Mahn, and W. Chad Shear

Post-Grant Patent Practice: Review and Reexamination . . . . . . . . . . . . . . . . . . . . . . . . . 30Faculty: Kevin Laurence and Matthew Phillips

One-Day Courses: April 2, 2014 (Wed)

America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions GEXPANDED AND UPDATED! . . . . . . . . . . . . . . . . 4Faculty: Paul Gardner

Post-Grant Patent Practice: Reissue, Owner-Requested Reexamination, and Supplemental Examination GNEW COURSE! . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28Faculty: Kevin Laurence and Matthew Phillips

Strategic Patent Portfolio Management in the Era of Legal Chaos, First-to-File and Budget Demands GNEW COURSE! . . . . . . . . . . . . . . . . . . . . . . . . . . . 34Faculty: Matt Buchanan

Three-Day Courses: April 3-5, 2014 (Thurs-Sat)

Crafting and Drafting Winning Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris

Drafting Patent License Agreements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14Faculty: D. Patrick O'Reilly, Brian Kacedon, William Pratt, and Michael O’Shaughnessy

Federal Circuit Law (2012-2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16Faculty: Gale Peterson, Jon Hokanson, Sharon Israel, and Kara Stoll

Patent Drafting & ProsecutionBased on a Single EPO/USPTO Specification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20Faculty: Bradley Hulbert and David Meldrum

Patent Infringement Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24Faculty: William Manning, Jake Holdreith, Aaron Fahrenkrog, and Marla Butler

Procuring and Enforcing Business Methodand Other Software-Based Patents After Bilski and BMC . . . . . . . . . . . . . . . . . . . . . . . . 32Faculty: Aldo Noto, Stuart Hemphill, and Devan Padmanabhan

Please note that the faculty members listed for each course are subject to change prior to the actual course date.

Register by February 10, 2014for Lowest Spring Tuition!

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Comment from previous attendee:

• “Lecturers, materials, location — everything withPRG exceeds expectations and is of the highestquality.”

— Steve Rost Taft Stettinius & Hollister LLP October 2012 attendee

The course lectures and materials includeanalyses of the following aspects of the AIA law:

1. The “first inventor to file” system, whichbecame effective on March 16, 2013, andreplaces the “first to invent” system of the pre-AIA law. The course lectures and materialsanalyze in detail the provisions of completelyrewritten Section 102 of Title 35 U.S.C., whichexpands – both geographically and temporally– the universe of prior art that may renderclaims unpatentable for lack of novelty or forobviousness under Section 103. Incorporated in

our analyses and materials are the PatentOffice’s new rules implementing the first-inventor-to-file regimen, its extensivecommentary interpreting the several unclearprovisions of the AIA version of Section 102,and its extensive examination guidelines.

2. The new “Post Grant Review”proceeding (so-called by the applicable newstatute, Chapter 31, Sections 321-329) beforethe newly named Patent Trial and AppealBoard, (formerly the Board of Patent Appealsand Interferences). This course considers indepth the requirements, limitations, potentialrisks and consequences of such a review, whichmay be initiated by any third party who desiresto challenge the validity of any claims in a patentissued or reissued during the nine month periodpreceding initiation of the review, on theground(s) of failure of the claims(s) to complywith the requirements of one or more ofSections 101, 102, 103 or 112 (with the

America Invents Act: MonumentalChanges, the Consequences andthe Unanswered Questions

Course Description

he extensive, complicated, unprecedented statutory changes and additions made by theAmerica Invents Act have now become fully effective. Not only is it necessary for all patentprofessionals 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 versionof the law applies.

The content of this course was created with the goal of assisting patent attorneys and agents in fullyunderstanding the new law, its consequences, nuances, ambiguities and unresolved issues createdby the new statutory language.

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Course FacultyPaul Gardner, PRG’s academic director, has over 45 years of experience in examining and prosecutingpatent applications, litigating patents, and teaching patent law and Patent Office practice to thousands ofattendees for PRG and the UCLA, University of Washington, and Seattle University law schools.

Why Should You Take This Course?

The America Invents Act, which isnow fully effective, is the mostsignificant development in the patentprofession in a generation. Those wholack a thorough understanding of thefull impact of this legislation run therisk of untold consequences to theirpractices and their clients’ businesses.This course provides crucial insightsinto the new law, its consequences,nuances, and ambiguities, and also tothe different possible interpretationsthat the Federal Circuit will be calledon to resolve in the years ahead,insights that will be invaluable to thosewho attend the course.

Projected State Bar CLE Credit:

Bonita Springs, FL April 2, 2014 (Wed)

Hyatt Regency Coconut Point Resort and Spa

8:15 a.m. - 11:30 a.m. and 1:30 p.m. - 4:45 p.m.

Registration deadline: March 10, 2014

6.0 Hours

PAUL GARDNERPATENT RESOURCES GROUP

ALEXANDRIA, VA

EXPANDED ANDUPDATED

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exception of a best mode violation, discussedbelow).

3. A new “Inter Partes Review”proceeding before the Board under new andrevised Sections 311-319, effective September16, 2012, which replaces pre-AIA inter partesreexamination. The new proceeding willpermit a third party to seek cancellation ofclaims in any patent (no matter when filed orissued) for lack of novelty under Section 102or obviousness under Section 103, but basedonly on prior patents or printed publications.

4. A new derivation proceeding undernew Section 291 of the statute, a proceedingbefore the Board whereby a patent applicantmay establish that the inventive entity namedin an earlier-filed application published withina year prior to initiation of the proceeding wasderived by the earlier filer from the inventiveentity initiating the derivation proceeding.

5. Revised Section 301 of the statutewhich permits any person to submit not only“prior art consisting of patents or printedpublications” believed to have a bearing on thepatentability of a particular patent’s claims, alimitation of the previous version of the statute,but also statements of the patent owner filedin a federal court or Office proceeding whereinthe patent owner expressed a position on thescope of any claim of the particular patent, andalso related documentation (e.g., courtpleadings and/or evidence). Such writtenstatement(s) and related documentation maybe considered by the Office in any proceedingreviewing the patent, but only with respect tointerpretation of the claim(s) involved.

6. New Section 257, which permits theowner of a patent to dispose of potentialinequitable conduct issues via a request for“supplemental examination” of the patent bythe Office to consider, reconsider, or correctinformation believed by the applicant to berelevant. Applying the “substantial newquestion of patentability” standard, the Officewill decide whether to order ex partereexamination based on the informationsubmitted in support of the patent owner’srequest. If reexamination is ordered, the Officewill consider all of the information submitted,not just the patents, printed publications andnewly-added “written statements” to which exparte reexamination requests are otherwiselimited under Chapter 30 of the statute,Sections 301-307.

7. A “Transitional [8 years, endingSeptember 16, 2020] Program for CoveredBusiness Method Patents,” a post grant reviewproceeding before the Board (mentioned inparagraph 2 above), for challenging the validityof any “covered” business method patent forwhich the petitioner initiating the proceeding(or his/her privy) had been charged withinfringement. (“Covered” patents are thoseclaiming “a method or correspondingapparatus for performing dataprocessing...operations used in the practice...ofa financial product or service” other than in‘technological inventions.’” Sec. 18(d)(1) ofPublic Law 112-29.)

8. New “best mode” law is a step towardglobal harmonization. The statute retains thebest mode disclosure requirement in Section112, Paragraph 1, but eliminates its violation as

the basis for an invalidity or unenforceability(inequitable conduct) defense. Newly rewrittenSection 282(a)(3)(A) of Title 35.

9. “Prioritized Examination,” a procedurefor obtaining expedited examination ofapplications, subject to applicant’s compliancewith certain prerequisites and payment ofsignificant fees, aimed at final disposition ofthe application with 12 months of the Office’sgranting of “prioritized” status.

10. Prior user rights pursuant to rewrittenSection 273, under which a good faith,domestic commercial use of a claimedinvention more than one year before theeffective filing date of a claimed invention (orthe date the claimed invention was firstdisclosed under a limited one-year grace periodprovided in Section 102(b)) is a defense toinfringement.

11. Other changes in the AIA of lesssubstantive concern and/or less frequentlyencountered, will also be considered, albeit toa lesser extent, such as

• Added inventor’s oath or declarationprovisions under rewritten Section 115 ofTitle 35,

• Very limited patentability of tax strategies,

• Patent Office fees, including new “microentity” fees,

• Preclusion from evidence of failure of anaccused infringer to obtain advice ofcounsel, and

• Elimination of qui tam actions for “falsemarking.” G

he Tanglewood Restaurant offers your favoriteinternational cuisine, updated with an exciting twist,

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Bonita Springs, FL March 30-April 1, 2014 (Sun-Tues)


8:15 a.m. - 11:30 a.m. and1:30 pm. - 4:45 p.m. (Sun-Mon)8:15 a.m. - 11:30 a.m. (Tues)

Optional Workshop 1:30 p.m. - 4:45 p.m. (Tues)

Registration deadline: March 10, 2014(Register by February 10 for best tuition rates!)

Comments from previous attendees:

• “Well structured course. Good pace. Very usefultips and information. High relevance to myspecific 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 andwritten by twelve practitioners: eightexperienced patent information specialists andfour former examiners with expertise in bothEnglish and foreign language searching. The

curriculum reflects the combined expertise ofLandon IP, which is one of only threecompanies selected by the USPTO to conductpatent searches on its behalf with a view toreducing USPTO examiners’ toweringexamination backlog.

Upon completion of the course, theattendee will have learned:

• How to approach a search in a systematic,methodical and exhaustive way.

• How to properly scope the search beforeeven beginning.

Art and Science of PatentSearching – Patentability,Validity & Infringement

Course Description

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

It provides direction for determining when a search is needed and what types and sourcesof 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 solidfoundation for those who seek to conduct searches accurately and efficiently. The course teacheswhen, how, where and why to conduct a search and is appropriate for those who will conduct thesearch or commission it.

Designed for patent attorneys and agents, inventors, paralegals and research managers, the courseand 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 toa particular search engine, a database product or a patent information service. Instead, the instructorsteach skills that are applicable across databases, both proprietary and public, and without bias towardthe features of a particular search engine. Unique among its many features, the course provides acomparison of the major patent search engines and teaches the strengths, weaknesses and benefitsof the database providers who provide them.

15.0 Hours

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Course Faculty • The faculty consists of patent searching and analysis leaders at Landon IP who haveexpert search experience as attorneys, patent search instructors, and examiners with the U.S. Patentand Trademark Office (USPTO).

LANDON IP, INC.ALEXANDRIA, VIRGINIA

BRIAN THURMOND JONATHAN SKOVHOLT

... And Optional Patent Searching Workshop


The Patent Searching course presentsa systematic process for performingprior art searches with greater efficiencyand precision. It is designed to benefita broad audience, including novicesearchers, seasoned patentpractitioners, and search professionals.The course also provides unbiased,detailed information concerning thelatest databases and tools of the trade.Expert tips from search professionals areprovided to enable high-level patentresearch through proper scoping,structuring, and performance of thesearch. Patent practitioners willrecognize that a robust understandingof the prior art is a vital part of thepatent process, particularly in view ofaccelerated examination demands andthe America Invents Act.

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• How to carefully search by classification, textquery progression, and citations, knowingthe benefits and pitfalls of each.

• Both the major differences and subtlenuances in conducting a patentability,validity or infringement patent search.

• Issues unique to searching within specifictechnical disciplines.

• Approaches to searching non-English-language patents and published applications.

• Approaches to searching non-patentliterature.

• Approaches to reporting search results.

• Differences between the major patentsearch engines and important considerationsin selecting an appropriate search tool.

• Ways to get high-level information frompatent search results.

• The basics of several peripheral topicsincluding the use of the USPTO searchtemplates, searching for acceleratedexamination, and searching using industrystandards.

Course materials

The text for the course is Art & Science ofPatent Searching – Patentability, Validity &Infringement, edited by Matthew Rodgers,Long Nguyen and David Hunt. Thethoroughness of the text will minimize theneed for note-taking at the program.

Optional PatentSearching WorkshopA patent search engine user account is

needed for the Workshop. Please contact PRGif you need assistance in obtaining one.

This Workshop is an optional add-on to theArt and Science of Patent Searching course. Itgives attendees the opportunity to practicehands-on patent searching alongside thecourse instructors. The faculty will work withthe attendees to answer questions and provideguidance as they execute their searches in realtime. The Workshop is structured to test eachattendee’s retention of the concepts covered inthe course as they put their training to use inseveral sample search projects. Attendees willbe provided with multiple sample disclosures,encompassing a wide variety of technologies,on which they will base their search. Theinformal, lecture-free setting will allow eachattendee to work independently, but in closeproximity to an instructor. Attendees mustbring their own laptop computers and will beprovided with wireless Internet access in theclassroom. Attendees are also asked to bring

their own search engine user accounts so thatthey will be able to practice using familiarsearch tools. The instructors will be able toprovide assistance with any of the major patentsearch engines. The attendees will be guidedthrough scoping the search, performing thesearch and analyzing their results. Answer keyswill be provided at the end of the Workshopso that participants may gauge their progressand have a reference to use for additionalpractice following the class.

Requirements and Prerequisites:

• Completion of the immediately preceding2014 Art and Science of Patent Searchingcourse

• Important: Wireless-enabled laptopcomputer (Internet Explorer or Firefox webbrowser, and Microsoft Office packagerecommended)

• Important: Patent search engine useraccount (in an attempt to focus on courseconcepts and high-level searchingtechniques, publicly available search enginescannot be solely relied upon for the labportion of this course)

• Important: Unrestricted use of third-partywireless connection (please verify with yourIT department that your security settings willallow access to the wireless hub necessaryfor the course). G


he Estero Bay Aquatic Preserve is home to a huge variety ofFlorida's native plants and wildlife, waiting to be discovered.T

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(Including 2.0 Hours Legal Ethics)



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)


For example, the rising tension within theFederal Circuit panels on the role of thespecification in claim construction and theincreasing pressure to revisit the Cybor rule ofde novo review of claim construction on appealwill bring important developments forpractitioners in the very near future on what toexpect for claim construction. For thepractitioner, the take-home message remains

to prosecute as if your life depended on literalinfringement and lay the groundwork in thespecification (the “single best guide” to themeaning of a claim term) for a broad claimconstruction. This course, presented by anexperienced faculty, each with a significantdepth of experience, suggests many practicalapproaches with those objectives in mind.

We discuss how to establish patentability

Chemical Patent Practice

Course Description

his up-to-the-minute course teaches the chemical patent practitioner how to usefundamentally sound principles to prepare and prosecute a United States chemical patentapplication in a conservative way and in view of all of the opportunities and pitfalls afforded

by the AIA,to enhance such possibilities as:

• obtaining broad claim construction for literal infringement purposes, particularly byavoiding "vile" language (i.e., lightning rods for noninfringement and §112, para. 2invalidity) 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 post-KSR world, including illustrations from several real U.S. patents prosecuted by a facultymember;

• 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 bycustomers;

• 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 FederalCircuit's en banc decision in Therasense and progeny thereof, and the impact of the AIAsupplemental examination procedure that went into effect September 16, 2012; and

• understanding the implications of the various provisions and effective dates of the AmericaInvents Act (AIA), particularly as they relate to filing strategies in and around the March16, 2013 date when the first inventor to file provisions took effect.

15.0 Hours

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FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC

DUPONTWILMINGTON, DE

TEVA PHARMACEUTICALSFRAZER, PA

TOM IRVING JILL MACALPINE DEBORAH HERZFELD KATHRYN SANCHEZRONA NARDONE

Course FacultyThe faculty has decades of collective experience across the complete spectrum of chemical practice.


Are you well-versed on howchemical claims are constructed andconstrued? Well enough to avoid anoverly narrow, often disastrous claimconstruction leading to a royalty-freetransfer of patented technology toyour competitor? Well enough not totrip up on obviousness over KSR? Ifyou’d like to answer these questionswith a resounding “yes” then youshould attend our highly-acclaimed,comprehensive Chemical PatentPractice course. Don’t fail your clientsor yourself in these tough economictimes – learn from the best.

PAUL BROWNING

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and validity under §103 in the post-KSR world,where knowledge and direction equate power.Case studies, involving real U.S. patents, willprovide a framework for creative thinking onthe law of prima facie obviousness.

We will look closely at the guidelines for“best mode” disclosure from a substantive andethical point of view, particularly in view ofchanges made in the AIA. In addition, weconsider the Federal Circuit inequitable conductdecisions in the context of the en bancTherasense decision, including its progeny,many of which will be reviewed for the lessonsthey provide to both in-house and privatepractice lawyers. In fact, the inequitableconduct and best mode discussions provide thetwo hours of ethics that is otherwise sometimeshard to find, particularly on substantive topicsrelated to your practice. The ethics discussionshould take place during the last two hours onthe second day (as currently estimated). The lastday will include a discussion of a hypotheticalchemical patent problem that synthesizes andreinforces the teachings of the class.

The enactment of the AIA did not wipe thepatent law slate clean. Because of the way theAIA was written, the “old” law will be relevantto practitioners until at least March 16, 2034!That’s right — practitioners will have to beexperts in both old and new laws for at leastanother 22 years! The Chemical Patent

Practice faculty has lectured on the new lawextensively and has studied it intensively inconjunction with people who wereinstrumental in the drafting of the legislation.The faculty will bring all of that background totheir presentations to you.

And do not be misled into thinking that thiscourse is applicable only to patent prosecutors.The principles taught will greatly help thoseinvolved with prelitigations, litigations, OrangeBook listings, due diligences and analysis ofthird-party patents for validity, infringement,and enforceability issues.


• “This is one of the best courses that I have evertaken. All of the instructors are excellent andprovide very helpful practical tips regardingchemical patent practice. The material providedis excellent and a very good reference guide.”

— Mark Cohen Scully, Scott, Murphy & Presser PC October 2009 attendee

• “Good overview and reminders of good practicepoints. Great consolidation of information andtips 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 theFinnegan, Henderson, Farabow, Garrett &Dunner faculty, with the invaluable assistanceof editor Stacy D. Lewis, will be provided toattendees at the course. This treatise coversvirtually every situation that can arise in thepreparation and prosecution of a chemicalpatent application. It will remain on your deskand in continual use long after the course.

The treatise underwent a complete overhaulin the aftermath of the enactment of the AIAto provide completely updated materials to thecourse attendees. Although the treatise is ofgreat value, the faculty members have foundthat the best vehicle for teaching is the use ofslides, which will be provided in book form toattendees on the first day of class. The slidesbook will contain ample room for note-takingand cross-referencing and, as such, will be avaluable addition to your daily kit of chemicalpatent practice tools. G

njoy a quiet meal in the simple elegance

of one of the Resort's restaurants and bars.E

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(Including 1.0 Hour Legal Ethics)

Bonita Springs, FL April 3-5, 2014 (Thurs-Sat)


8:15 a.m. – 11:30 a.m. and 1:30 p.m. – 4:45 p.m. (Thurs-Fri)

8:15 a.m. – 11:30 a.m. (Sat)



• “Practical advice for drafting enforceable patentclaims, sprinkled with supporting legalauthority.”

• “Spanning the gap between current Federal Circuitlaw and actual, practical tips on how to incorporatethe latest law into successful prosecution practices.”

• “Good coverage of current law and potentialpitfalls associated with certain practices (I'mplanning to make changes to my practice withregard to various pitfalls you have pointed out).”

Answer to the Conundrum.

There is a sound basis for dealing with thedilemma generated by the Federal Circuit! Apractical ex parte practice path is now in beingthat navigates through the chaos. Its road signreads “LP-CD (Low Profile, CommonDenominator Practice)”. LP-CD, despite thechaos it penetrates and traverses, is chartedclearly and boldly in this PRG course. Crafting& Drafting Winning Patents was designed andcreated by PRG’s Professors Paul Gardner andIrving Kayton and enriched by the PRG coursefaculty.

Crafting & DraftingWinning Patents

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 first-

inventor-to-file system under the America Invents Act (AIA).

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 fromthe 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 SurgicalCorp., where the court imported the limitation “pleated” into a broad claim reciting a surgical meshplug used for hernia repair, relying heavily in doing so on the “Summary of the Invention” thatdescribed a plug having pleats. The court repeatedly referenced the Summary of the Inventionthroughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patent didrecite a pleated plug, without even mentioning, let alone reconciling, the “immutable” doctrine ofclaim differentiation that should have sustained the broad claims.

Claim interpretation is only one chaos region. There are others where the Federal Circuit case law isequally inconsistent, including the law concerning the written description requirement, means-plus-function clauses, the doctrine of equivalents, and prosecution history estoppel.

This creates an immense dilemma for conscientious patent practitioners trying to write and prosecutepatent applications that will provide their clients with the patent protection they deserve. Which casesshould be relied on, and which should be ignored?

15.0 Hours

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Course FacultyCollectively, over 75+ years of experience litigating, prosecuting and teaching about patents.

DLA PIPER US LLPRESTON, VA

KENYON & KENYONNEWYORK, NY

JOHN TSAVARISDALE LAZAR


Learn the areas of chaos in FederalCircuit jurisprudence of primaryconcern to practitioners who prepareand prosecute patents. The course willfocus on a series of cases where thepatent owner lost, not because ofwhat the litigators did, but because ofhow the patent practitioner draftedand prosecuted the application.Compounding the problem is the timepressure created by moving to a first-inventor-to-file system under theAmerica Invents Act (AIA) and theanticipated increase in the filings ofprovisional applications — with theirmany traps for the unwary. The coursewill teach you how to write provisionalapplications and draft and prosecutenon-provisional patent applications toavoid these pitfalls.

DINSMORE & SHOHL LLP,DAYTON, OH

PAUL ULRICH

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This course distills everything from the law(and dicta) of the Federal Circuit and itspredecessor courts that has a material bearingnow, today, and in the foreseeable future, onhow we must successfully:

1. Prepare for drafting the application;

2. Design what must be included in, andexcluded from, the provisional applicationand the nonprovisional applicationspecification and drawings and, veryimportantly, in what form and format itshould be included;

3. Engage in claim drafting strategy designedto result in literal infringement, recognizingthat this strategy must be taken intoaccount as a principal factor in the earlierdesign of the specification;

4. Develop a protocol and a philosophy forprosecuting the application that advanceand do not defeat the efforts in (1) through(3); and

5. Balance the accomplishments of (1)through (4) against, first, increased costs ofcrafting and drafting that sometimesaccrue and, second, their effect on thelength of the patent term that will result,and third, the time pressure created bymoving to a first-inventor-to-file systemunder the AIA.

Crafting & Drafting is not a survey coursecovering the broad landscape of patentprosecution or a workshop. Instead the coursedrills deeply into the six specific areas of FederalCircuit chaos that have most seriously andfrequently destroyed the value of patents. Wewill focus on what we can do as patentprosecutors to prepare and prosecuteapplications that are immune from the chaos.

Crafting & Drafting will almost certainlyeffect a change in your patent law life, becausethe Federal Circuit has effectively (albeitunwittingly) dictated that it be so.

It is noteworthy that many hundreds ofpatents have already issued using the Crafting& Drafting techniques set forth in this course(several of which will be reviewed), withbeneficial effect in license and litigationnegotiations.

Legal ethics issues — including the recentTherasense decision and its profound changesto the law of inequitable conduct and duty ofdisclosure — will be covered from 9:15-10:15a.m. on the last day of the course, as currentlyestimated.

Who Should Take This Course?

This course is for patent practitioners with aminimum of two years of practice, andpreferably more. It is sufficiently sophisticatedfor even the most experienced. The facultyknows this to be true because the problemsand solutions about which they conferred anddebated in bringing this course to fruitionplumbed the depths of their combined patentlaw knowledge, experience and ongoingresearch and scholarship.

Beginning patent practitioners should lookforward to PRG’s four-day Workshop designedspecifically for them, The Winning PatentsWorkshop. For details visit our website atwww.patentresources.com.

Course Materials

A comprehensive, one-volume course text,entitled Crafting & Drafting Winning Patents,and a bound set of lecture slides, are definitiveon the subject and will be given to registrantsat the course. The Textbook and slides areconstantly updated and revised to includerecent decisions and changes in the law —including the applicable provisions of the AIA.G

isit the Tarpon Bay Restaurant to enjoythe freshest seafood, a beach cottage vibe,

and exceptional views of Estero Bay.V


The Designing Around course distillsthe patent infringement analysis intocomprehensive yet concise step-by-step checklists that can be used byattorneys at all experience levels toassist their clients to developcompetitive, noninfringing products.

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8:15 a.m. – 11:30 a.m. (Tues)



• “Practical explanation of case law to apply topatent drafting, infringement analysis andopinion writing.”

• “The substance was excellent. Presentationsgave good overviews and the course books giveencyclopedic detail for topics of interest.”

• ”Well organized, very thorough, presenters allknow their stuff.”

Four cookbooks covering (1) literalinfringement, (2) infringement under thedoctrine of equivalents, (3) infringement ofmeans plus function claim elements, and (4)prosecution history estoppel, are provided.Using and following these cookbooks, whichdistill opinions by the Federal Circuit and theSupreme Court in cases from Pennwalt to FestoIX, any patent practitioner can counsel his orher client on how to “design around” thepatented invention with almost certainimpunity – a design that appropriates thepatented invention and that, prior to Pennwalt

and its progeny, would have been held aninfringement rather than the socially desirableactivity of “designing around.”

This course will show practitionersrepresenting potential infringers how tocounsel competitive product design under theguidance of Federal Circuit and Supreme Courtcases, which will almost always be viewed aseffective “designing around.” How to conductlitigation to achieve a happy ending for yourinfringement-accused client will be set forth inelegant simplicity.

Actual Demonstrations

To ensure no confusion on anyone’s part inthis exercise, the faculty and students will gothrough several claim construction exercisesand compare their conclusions with the FederalCircuit’s claim construction in actual cases. Amock design around exercise will also bepresented. The demonstration considers client,marketing and engineering perspectives, inaddition to legal analysis. To prepare for the

“Designing Around”Valid U.S. Patents

Course Description

n Markman and Cybor, the Federal Circuit required district courts to construe claims as amatter of law and decided to review claim construction de novo. The object was to makeclaim construction predictable, so that claims would better perform their public notice

function. The result has been an unmitigated disaster, often (but not always) reading limitationsinto 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 noticefunction of claims ab initio. This course will explore the current condition of claim construction indetail and explain how competitors can use it to their advantage, even when the claims on theirface are literally infringed.

15.0 Hours

I

Course Faculty • PRG has offered “Designing Around” Valid U.S. Patents for over 15 years, and it remainsone of our most popular courses.

PATRICK BURNSGREER, BURNS& CRAIN, LTD.

CHICAGO, ILLINOIS

JOHN PINKERTONTHOMPSON & KNIGHT

DALLAS, TEXAS

PATRICIA PRIORGREER BURNS & CRAIN LTD.

CHICAGO, IL

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exercises and demonstration, the course facultywill illustrate the accused structures relative tothe claims in the landmark, no-infringement-by-claim construction cases of Alloc andNystrom, the no-infringement-by-equivalentscases of Slimfold, Laitram and London, and thesuper landmark, no-equivalents-at-all after-prosecution-history-estoppel case of Festo IX.These and other cases are presented in literal,graphic clarity.

How to Draft Infringementand Noninfringement Opinions

The effects of Seagate, the AIA, and Bard onfindings of willfulness, enhanced damages,and fee awards will be discussed in detail. Thefaculty also explains the substance and formopinions should have to maximize theireffectiveness in litigation.

Course MaterialsThe two-volume text for “Designing

Around” Valid U.S. Patents is authored by thedistinguished course faculty, each of whom hasextensive successful litigation, prosecution andcounseling experience. Nothing like theseunique books exists anywhere else. G

he attentive staff at the Stillwater Spa are ready to provideyou with a variety of rejuvenating services, including massage

therapy, facial skin care, water therapy, and spa body treatments.T

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8:15 a.m. – 11:30 a.m. (Sat)



• “This course provided a great overview oflicensing issues and anecdotal scenarios givingrise to said issues.”

— Andrew Weber Honigman Miller Schwartz and Cohn LLP April 2012 attendee

• “I have been drafting license agreements for theFederal government for 6 years, and this coursehelped tie together everything I've learned inthis time.”

— Suzanne Seavello Shope Centers for Disease Control & Prevention April 2010 attendee

• “The information is very practical and relevantto the 'real world' problems encountered indrafting and reviewing agreements.”

— Glenn Smith Bausch & Lomb, October 2008 attendee

This is a course for the craftsman. Both thecourse and the text provide a solid basis forresponding to virtually every license draftingproblem that may arise. Even for the highlyexperienced licensing lawyer, new insights maybe provided; at the very least, the course willbe a rich, comprehensive refresher. For the lessexperienced licensing lawyer, it will open vistas,both with respect to hidden problems and tomechanisms for dealing with them.

Drafting PatentLicense Agreements

Course Description

his course and its text provide concrete drafting and negotiating advice with precise referencesto existing law.

The course lays the groundwork for a clause-by-clause examination of all significant elementsof the patent licensing agreement. The practical questions always focused on are how and whethereach 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 executionand authentication provisions, are examined in detail. Practical, hypothetical illustrative examples areused, often in workshop form, with carefully crafted problem handouts distributed to the attendeesduring the course.

Throughout the course, the faculty members emphasize achieving legally satisfactory drafting resultsby recognizing the logical principles that underlie the job to be done. Sample forms are used toexplain the practical considerations upon which they are based. Law and precedent are presented interms that make clear the legal reasoning behind recommended drafting approaches.

15.0 Hours

T

Course Faculty • The faculty teaches by sharing decades of combined experience in licensing.

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC

D. BRIAN KACEDOND. PATRICKO'REILLEY WILLIAM PRATT MICHAEL O’SHAUGHNESSY


Licensing is a key strategy by whichcompanies realize significant valuefrom their patents and technology. Theability to draft, negotiate and interpretlicense agreements is a core skill for IPattorneys and other professionals whodeal with licenses. This course providesa comprehensive overview of keylicensing concepts, the drafting of keyclauses in a license agreement, and theimpact of related topics such ascompetition law, export control lawand the Bayh-Dole Act. It is taught byexperienced license professionals withan emphasis on practical considerationsand provides valuable insights anddiscussion for both novices and moreadvanced practitioners.

◆


Legal ethics in license negotiations will bepresented during the afternoon session on Day2 and in misuse issues during the morningsession on Day 3, as currently estimated.

Course Materials

The text for the course is the Seventh Editionof the classic, Drafting Patent LicenseAgreements (BNA), by Brian G. Brunsvold, D.

Patrick O’Reilley and D. Brian Kacedon. Thethoroughness of the text and accompanyingslides will minimize the need for note-taking atthe program. Moreover, this Seventh Editionincludes a computer disk, which has a set ofform paragraphs that can be incorporated,with careful editing, into a license agreementto be prepared by the course attendee.

The hardcopy edition of the course text willbe given to each attendee at the program. Thevolume containing the printed slides that willbe used throughout the lectures will also beprovided at the course; this volume will includeextensive license drafting workshop materialsand Justice Department licensing guidelines.G

eed to burn some energy after class? Test your skills,strength, and stamina on the rock-climbing wall!N

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Bonita Springs, FLApril 3-5, 2014 (Thurs-Sat)



8:15 a.m. – 11:30 a.m. (Sat)


Federal Circuit Law(2012-2014)

America Invents Act (AIA)

The AIA is generally regarded as the most significant change to the U.S. patent system since 1952.For years to come, however, 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 particularcases may be affected by the AIA.

Course Description - Two Years in Review - Taught by Experienced Lecturers, All Former TechnicalAdvisers/Law Clerks

his is one of PRG’s longest continuously offered courses. Because the course focuses onthe last two years, attendees often repeat this course every two years to remain current.Consequently, this course offers practitioners a unique opportunity to both become current

in the law, and to remain so. And to do so in an interactive environment that is both informativeand intellectually challenging. The interactive environment (as described below) allows attendeesto contribute to the learning experience, and avoid sitting through a series of dull lectures.

There was a time when “patent law” was considered sufficiently “settled” such that slip opinionscould be allowed to accumulate in a “stack” until an opportunity or need for review arose. Thosedays are gone. Now that “stack” for many has become a large electronic file and has likely grownbeyond the point of realistically being able to “catch-up” with the opinions. If this applies to you,then you are a prime candidate for this course.

15.0 Hours

T

Course FacultyThe one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the court’s history, providematchless inside perspective and candid, unequaled insight to Federal Circuit law – past, present andfuture. 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 PETERSONCOX SMITH

SAN ANTONIO, TX (FORMER TECHNICAL

ADVISOR TO THE LATE CHIEFJUDGE MARKEY)

SHARON ISRAELMAYER BROWN LLPHOUSTON, TX

(FORMER LAW CLERK TOCIRCUIT JUDGE LOURIE)

JON HOKANSONLEWIS BRISBOIS BISGAARD &SMITH LLP, LOSANGELES, CA

(FORMER TECHNICALADVISOR TO THE LATECIRCUIT JUDGE MILLER)

KARA STOLLFINNEGAN, HENDERSON, FARABOW,

GARRETT & DUNNER, LLPWASHINGTON, DC

(FORMER LAW CLERK TO CIRCUITJUDGE SCHALL)


Each week the Federal Circuitpublishes opinions that materially“clarify” and sometimes “alter”existing practice. One cannotcompetently practice as a patentattorney today, in prosecution,litigation, counseling or licensingwithout an understanding of theFederal Circuit’s most recent opinions.The distinguished faculty of FederalCircuit Law (2012-2014) will expertlyguide you through two years of relevantand up-to-the-minute cases in aninteractive lecture format thatencourages active attendeeparticipation. Moreover, lecturers willdiscuss new cases in the context of priorcases (many outside the two-year timespan), thus giving you not only “currentlaw,” but also a perspective on how thelaw has changed.

INCLUDING COMMENTARYon the America Invents Act

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Every practitioner knows the importance, ifnot the fundamental requirement, of stayingup-to-date on Federal Circuit and SupremeCourt law. But the Federal Circuit weeklyhands down opinions, frequently precedentialopinions in patent cases that, according to theFederal Circuit’s Internal Operating Proceduresfor precedential opinions (IOP # 10), addsomething to the existing body of case law, asopposed to simply resolving the parties’dispute. Thus, each precedential opinion wasconsidered, by definition, noteworthy enoughthat the Federal Circuit elected to issue aprecedential opinion. Although some mayquestion that choice, failing to stay up-to-dateon at least precedential opinions, by definition,results in “flying blind” in the face ofsometimes rapidly developing changes, manytimes involving opinions creating new “issues,”and “new law,” for litigators and prosecutorsalike. What’s more, even taking the time toreligiously read the opinions is frequently notenough. The Federal Circuit unfortunatelyoften issues opinions that vary from establishedprecedent – sometimes dramatically,sometimes more subtly - and often withouteven mentioning prior contrary authority. Or,in which contrary authority is buried indissenting and concurring opinions. Suchopinions are highlighted in the course.

The Changing “Face” of the Federal Circuit

Of equal importance, the “face” of theFederal Circuit has changed dramatically overthe past three years. The Federal Circuit is nota monolith, but rather a collection today oftwelve active and six senior judges, each ofwhom have individual judicial philosophies thatimpact various patent law issues. The “judicialphilosophy” of those eighteen active andsenior judges is far from uniform. For example,

some of the judges favor limiting claimconstruction to “the invention” that is thesubject of the “written description,” whileothers focus more on the claim language.Some judges take a narrow view of theSupreme Court’s recent decisions involvingpatent eligibility under § 101, while others takea more expansive view. The list goes on.

As a result, actually understanding FederalCircuit opinions today frequently involvesgoing beyond the printed words, and requiresexamining the views of individual judgesparticipating in that opinion – whether writing,joining, concurring or dissenting. For example,in CLS Bank Int’l v. Alice Corp. Pty. Ltd. (2013),although issued as an en banc opinion onpatent eligibility under § 101, diverse opinionstotaling 135 pages were handed down onseveral issues – collectively only garneringplurality (not majority) support on core issuesnecessary to resolve the dispute. As a result,although likely to be subject to Supreme Courtreview, there was no single “majority”precedential opinion. Strongly held individualjudicial philosophies foreshadow similar resultsin the future on a variety of issues not limitedto § 101.

New judges necessarily mean new judicialphilosophies, and possible “refinements,” ifnot outright changes, in existing law. We arealready seeing some of that. Judge Wallach,confirmed in 2011, emphasized in Plantronics,Inc. v. Aliph, Inc. (2013) that in connection withthe “secondary” or “objective” factors under§ 103, “we have required courts to considerevidence of the objective indicia ofnonobviousness prior to making the ultimatedetermination of whether an invention isobvious.” Judge Reyna, also confirmed in2011, concurring in Apple, Inc. v. U.S. Int’l

Trade Comm’n (2013), wrote that “I emphasizethat objective evidence of nonobviousness,such as that gleaned from the patentedproduct’s role in the marketplace, is the indiciaof the innovation principle upon which restsour system of patents.” Thus, these two new,active judges have expressed judicialphilosophies that emphasize the importance of“secondary” or “objective” evidence of non-obviousness that, while correct, add elementsof timing and weight not seen recently.

Also, in important cases such as CLS BankInt’l v. Alice Corp. Pty. Ltd., new judgesTaranto, Chen and Hughes did not participate,and Judge Linn has assumed senior status.Because of the close votes, those changescould sway the Federal Circuit one way or theother on fundamental issues involving § 101.

Indeed, since 2010, when Chief Judge Radersucceeded Chief Judge Michel, two activejudges have resigned, two active judges haveassumed senior status, two senior judges havedied, and six new active judges have beenconfirmed – three in 2013 alone. Thus, fullyone-half of the Federal Circuit’s complement oftwelve active judges has been replaced since2010 – a rare event by itself - and the “judicialphilosophy” of the most recent appointees isjust emerging. The changing “face” of theFederal Circuit suggests even more significantchanges in the law in upcoming opinions.

Increased Supreme Court Review

The U.S. Supreme Court has, over the pastfew years, granted certiorari in a recordnumber of IP cases. In its 2012 Term (2012-2013) for example, the Supreme Court decidedsix cases involving IP issues - Bowman v.Monsanto Co. (patent exhaustion), Already,

... continued on next page.

he Resort's outdoor fire pits provide a unique venue

for relaxing and enjoying the Florida evenings.T

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LLC v. Nike, Inc. (although a trademark case, itinvolved covenants-not-to-sue in a contextanalogous to patent law), Kirtsaeng v. JohnWiley & Sons, Inc. (international exhaustionunder copyright law - similar issue arises inpatent law), Gunn v. Minton (federaljurisdiction of legal malpractice actions),Association for Molecular Pathology v. MyriadGenetics, Inc. (patent eligibility under § 101),and Federal Trade Comm’n v. Actavis, Inc.(reverse settlement agreements).

In its current 2013 Term (2013-14), theSupreme Court has already granted certiorariin four cases, Medtronic, Inc. v. BostonScientific Corp. (burden of proof in declaratoryjudgment actions involving a non-breachinglicensee), Octane Fitness, LLC v. ICON Health &Fitness, Inc. (“exceptional” case standard),Highmark Inc. v. Allcare Management Systems,Inc. (deference to be accorded to district court’sexceptional case determination), and Petrella v.Metro-Goldwyn-Mayer, Inc. (laches incopyright cases - similar issue arises in patentlaw). Pending petitions for certiorari suggestthat “cert.” may be granted in 2-3 additionalIP cases – maybe more.

Although the primary focus of the course ison Federal Circuit law, Supreme Court cases(both decided cases and cases in which “cert.”has been granted) are covered as well. Also,cases such as Gunn are addressed in which“cert.” was to the Texas Supreme Court, butwhere the net effect of the Supreme Court’sdecision overturned the Federal Circuit’sdecision and rationale in seven cases!

Filling In the Gaps

This course “fills in the gap” left by“traditional” CLE programs and variouspublished “case summaries,” and is designedto allow counsel to comprehensively becomeand remain current on today’s frequent andrapid changes in the law. Unlike the one yearor less coverage typically offered by CLEcourses, this course covers a two-year span,providing in-house and outside counsel alikean opportunity to remain comprehensivelycurrent on “must be aware of” cases byattending biennially.

Also, unlike many CLE courses that offer a“patent law update” in a one hour or so timeslot (which necessarily limits focus to but a fewof the 100+ decided cases), this course offersa comprehensive review of precedential cases(as well as select non-precedential cases), inseveral formats of varying depth so that theattendee can chose which format works best– namely comprehensive text, PowerPointslides, and lectures focused on “newdevelopments”:

(A) The course is scheduled over 2 ½ days –time for in-depth review and analysis.(B) Cases are reviewed in three volumes ofcomprehensive text. (C) Case highlights areaddressed in printed PowerPoint slides whichattendees may follow and annotate during thelectures. (D) Issues unique in each presentedcase, and how those issues relate to prior law,will be highlighted, plus the opinions will be“boiled down” to various “teaching points,”as well as to insights to the Federal Circuit thatare only available through the “lens” of aformer technical advisor/law clerk.

For example, the written text for cases thatprimarily involve novelty and loss of right to apatent under § 102, and obviousness/non-obviousness under § 103, span 400+ pages ofreview and analysis. Additionally, those casesare further digested into PowerPoint slides thatan attendee may annotate during thediscussion of §§ 102 and 103 cases. Thus, anattendee may follow the discussion whileannotating the slides and refer to them later.The same is true for the numerous other topicslisted in the course syllabus.

Also unlike most CLE courses, this programis “interactive.” Questions from attendees (aswell as from the panel), and open discussion,are actively encouraged in “real time” duringthe lectures. If you disagree with (or agreewith) a point made by a lecturer, or wish toraise a question or observation, you need onlyraise your hand. The lecturer will stop andrecognize you – and whateverquestion/comment you have may spark furtherdebate – which we encourage. Over the yearswe have found that this “interactive”environment is a “signature” feature of thiscourse. The issues we talk about are generallyworthy of debate – we encourage the same.

Sampling of Cases Reviewed

There are a number of both controversialand “must know” decisions that will beaddressed. This is just a sampling.

Practitioners writing applications forcomputer-aided inventions should thoroughlyunderstand the implications of cases such asErgo Licensing v. CareFusion (2012), holdingclaims calling for a “programmable controlmeans” invalid for failure to disclose acorresponding algorithm — although suchdevices are “off the shelf” devices. And NoahSystems v. Intuit (2012) holding claims invalidbecause the disclosed algorithm did notimplement all claimed steps. But contrast casessuch as Power Integrations, Inc. v. FairchildSemiconductor International, Inc. (2013)(“circuit” may recite sufficient structure toavoid construction as a means-plus-functionlimitation).

Litigation practitioners will be interested inIn re Bill of Lading (2012), setting out thepleading requirements for direct, contributoryand induced infringement. But alsopractitioners must consider K-TechTelecommunications, Inc. v. Time WarnerCable, Inc. (2013) where the panel splits onwhether compliance with Form 18, FED. R. CIV.P., is sufficient to support a civil action forpatent infringement.

In the area of inequitable conduct, a panelmajority in Network Signatures, Inc. v. StateFarm Mutual Automobile Ins. Co. (2013)concluded that filing out a PTO form thatfailure to pay a second maintenance fee was“unintentional” without any furthersupplementation did not constitute inequitableconduct, but a strong, well-reasoned dissentargued otherwise. On the other hand, theopinion in Intellect Wireless, Inc. v. HTC Corp.(2013) gives us the first clear instance ofadjudged inequitable conduct followingTherasense, and which involved a false Rule132 affidavit. For those thinking that Rohm &Haas Co. v. Crystal Chem. Co. (1983) was nolonger good law – think again.

Case law decisions in the area of patent-eligible subject matter under § 101 haveparticularly left practitioners without trueguidance. In In re Bilski, the Federal Circuitattempted to clarify the test for determiningwhether a claim recited patent-eligible subjectmatter by holding that its “machine ortransformation test” was the sole and exclusiveinquiry. The Supreme Court promptly rejectedthe machine or transformation test as the soletest for patentable subject matter, but declinedto articulate a clear test thus leaving a vacuumfor the Federal Circuit to fill. The SupremeCourt also thoroughly rejected the FederalCircuit’s view of § 101 in Mayo CollaborativeServices v. Prometheus Labs. (S.Ct. 2012), butthe Federal Circuit responded in Myriad (2012)in a 106-page collection of three opinionscontinuing to advocate its splintered view of§ 101. The Supreme Court, on review in 2013,largely rejected the rationale of the FederalCircuit majority, but did little to clarify theambit of patent-eligible subject matter outsidethe specific facts of that case.

Meanwhile, the Federal Circuit continueswith its view of patent eligibility under § 101.For example, a panel in CyberSource Corp. v.Retail Decisions, Inc. (2011), questioned thevalidity of Beauregard-type claims, but as apanel opinion could not overturn Beauregard.Does that signal the demise of such claims?Opinions by some judges in CLS Bank v. AliceCorp. (2012) en banc suggest that Beauregard-type claims do not avoid the fundamentalanalysis for patent eligibility under § 101.

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he Belvedere Room, just off the main lobby, providescomfortable sofas and armchairs and a peaceful space to relax;

play a game of backgammon, chess, or checkers; or enjoy a cocktail. T

Claim construction remains controversial.The Federal Circuit granted en banc review inLighting Ballast Control LLC v. PhilipsElectronics North America Corp., and held oralargument in 2013, on the question whetherthe court should overrule Cybor Corp. v. FASTechnologies, Inc. (1998), namely that claimconstruction was a question of law for thecourt. It seems likely that the court will issuean opinion in early 2014. We must wait to seewhether, and to what extent, the courtfractures in addressing that question.

The court also continues to break newground in the interplay of reexamination anddistrict court infringement litigation. In asurprise to many observers, the Federal Circuitin Fresenius USA, Inc. v. Baxter (2013) held thatthe PTO’s cancellation of claims inreexamination moots a pending infringementaction on those claims. As a result, the districtcourt’s “final,” multi-million dollar judgmentwas reversed because it was not “finalenough.” With the recent denial of en bancreview, and Circuit Judge O’Malley’s strongdissent urging a circuit conflict withQualcomm, Inc. v. FCC (D.C. Cir. 1999), this isa “must know” highly controversial case, withor without Supreme Court review, affectingcounsel’s choice to seek reexamination.

Continuing in its run of surprises, the FederalCircuit held that a license defense can beeffective for broadened reissue claims not inexistence at the time of the original licenseagreement. In Intel Corp. v. Negotiated DataSolutions, Inc. (2012) the Federal Circuitaffirmed the district court’s summary judgmentof license and non-infringement defenses infavor of Intel pursuant to a licensing agreementwith N-Data’s predecessor in interest, NationalSemiconductor Corp.

In an unusual generic v. generic case,Momenta Pharms., Inc. v. Amphastar Pharms.,Inc. (2012) the Federal Circuit vacated apreliminary injunction against Amphastar andin doing so appeared to broaden the scope ofthe safe harbor provision of the Hatch-Waxman Act in an unusual way that promptedan explosive dissent by Chief Judge Rader.

In other areas, the Federal Circuit hasquashed long-standing abuses. In Uniloc USA,Inc. v. Microsoft Corp. (2011), for example, theFederal Circuit held, in the area of damages,that “as a matter of Federal Circuit law that the25% rule of thumb was a fundamentallyflawed tool for determining a baseline royaltyrate in a hypothetical negotiation.” The 25%rule, used for more than a decade, has thusbeen relegated to the scrap heap. Continuingthe trend of reining in large damage awards,in LaserDynamics v. Quanta Computer (2012),the Federal Circuit further narrowed the entiremarket value rule almost to oblivion.

Those are but highlights. Federal Circuitand related Supreme Court opinions in the pasttwo years have created law that practitionersmust know – especially in light of the changingcomposition of the court.

Smoothing the Troubled Waters?

In many respects, this is a user-designeddynamic course because we collected andanalyzed course evaluations to determine thetopics and emphasis users desire. For the manythat have attended this course punctually everytwo years, the curriculum, in response to userinput, retains the topics you have come toexpect, but has been expanded to includeseparate chapters and lectures on FederalCircuit en banc cases and Supreme Courtcases, selected important cases that do not

conveniently fit within a single topic(“crossover cases”) as well as noteworthypractice & procedure cases, noteworthyappellate practice cases, joint infringement,legal ethics within the context of recentinequitable conduct cases, and selected Hatch-Waxman cases, among others – and nowincluding the AIA.

All of the above represents just some of thecontinually breaking judicial news from theFederal Circuit and Supreme Court that will becovered. As attested by hundreds of pastcourse attendees, the faculty presents just theright amount of factual and legal detail formastering each case discussed.

Course Materials

The full substance of the course is capturedin the Federal Circuit Patent Law three-volumetext, which extends over 1,500 pages,supplemented by PowerPoint slides that digestindividual cases and court trends on specfictopics. G


• “Thorough review of each topic and each CAFCdecision. Good discussions among speakers andattendees. 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 getbetter & better.”

— Steven Fontana Fontana International October 2009 attendee

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This course is ideal for anyone whofiles patents before both the EPO andthe USPTO. It provides a practicalapproach to developing a single patentapplication that complies with therequirements of both of these patentauthorities.





8:15 a.m. – 11:30 a.m. (Sat)


The need for optimizing a patentapplication, so as to meet the requirements ofboth the USPTO and European Patent Office,has never been greater. And USPTO and EPOExaminers continue to act on divergentexpectations regarding the applications theyreview.

This course will give attendees acomprehensive overview of the principlesunderlying the preparation and prosecution ofpatent applications in both the U.S. and Europe.

The speakers will:

• Explain key, major differences betweenpractice before the USPTO and EuropeanPatent Office

• Compare and contrast the sometimes quitedifferent statutory requirements in eachjurisdiction, and propose solutions tomaximize the scope of protection andminimize costs

• Offer the "best practices" for preparing anapplication that is well-suited for filing inboth the U.S. and Europe

• Discuss the implications of differentEPO/U.S. prosecution procedures andtimelines

• Describe differences in "prior art"definitions between the EPO and the USPTO

• Show how to draft effective responses toEPO rejections, comparing EPO "inventivestep" and USPTO "obviousness" arguments

Practical application:

• During the course attendees will be invitedto edit sample claims, specfications, andresponses to Official Actions.

• Such sessions will be followed by plenarysessions during which attendees andspeakers will discuss the worked examplesto produce optimal submissions to the EPOand USPTO.

Patent Drafting & ProsecutionBased on a Single EPO/USPTOSpecification

Course Description

hile the EPO and USPTO have similar requirements for patent applications, the sameapplication can have dramatically different results in Europe and the U.S. An applicationoriginating in the U.S. frequently encounters substantial difficulties before the EPO. For

example, the U.S. applicant often finds itself unable to amend claims in a manner clearly availableduring U.S. prosecution because of European "Priority Rules." Recurrently, claims issued by theEPO to a U.S. applicant are unnecessarily narrow by European standards.

This course will show you how to draft and prosecute one, optimized patent application that willcomply with the differing requirements of both the EPO and the USPTO.

There will be practical worked examples, illustrations, demonstrations of “best practice” and plentyof discussion, ensuring that you will go home with a realistic and workable solution to a perennialproblem.

15 Hours

W

Course Faculty • This course is taught by one U.S. and one European patent attorney with experience inboth patent prosecution and litigation for multinational clients.

MCDONNELL BOEHNEN HULBERT & BERGHOFF LLPCHICAGO, IL AND MOUNTAIN VIEW, CA

BRADLEY HULBERT DAVID MELDRUM

D YOUNG & CO LLPLONDON

Brought to you inpartnership with:

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ocated on 26 acres overlooking thebreathtaking Estero Bay Aquatic

Preserve, this enticing Bonita Springs,Florida hotel offers limitless recreation,personalized service, and attention todetail at every turn.

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The seminar will also include ongoingopportunities for participants to ask questionsand discuss individual concerns.

For course syllabus, go to our website atwww.patentresources.com G

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8:15 a.m. – 11:30 a.m. (Tues)



• “This is a very comprehensive due diligencecourse. The speakers are very knowledgeableand continually supplement the coursecurriculum with real-world war stories. Thecourse materials are invaluable and include agreat 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 speakersare dynamic and interested in both the subjectmatter and in teaching.”

— Julie Henrich Plextronics October 2012 attendee

• “[I liked] the fluency and knowledge of thelecturers on the subject. The content and thelecturers are excellent. I’m sure this course canhelp both patent and non-patent attorneys.”

— April 2011 attendee

During the course, you will interact withinstructors and other students while exploringcase-study examples and lecture topics on awide 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 presentationcovers every phase of a due diligenceinvestigation. Beginning with the initialinvolvement of patent counsel, the panelnavigates a course through early information-gathering, drawing in the attendees as part ofthe due diligence team to spot critical patentissues that can make or break a deal. The panelalso shares effective strategic approaches tofocus investigations and requests for furtherinformation during the plunge into the data

Patent Due Diligencein the AIA Era

Course Description

his course will provide practical guidance for conducting patent due diligence investigationsin today’s 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 completeinvestigations. These tactics apply to both large and small transactions, irrespective of the natureof the specific transaction or the party you might be representing. Now, more than ever, companiescontemplating commercial transactions—be they licensing, corporate mergers, acquisitions, orprivate equity deals—need to rely on due diligence counsel to provide a thorough understandingof the value and risks associated with the transfer of intangible assets.

15.0 Hours

T

Course FacultyThe faculty, considered collectively, have participated in over 100 due diligence evaluations and will takeyou through the process “soup to nuts,” whether you are representing the target or the acquirer.

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLPWASHINGTON, DC AND RESTON, VA

ANTHONY GUTOWSKI ANDREW HOLTMANBRYAN DINER


As today’s tight economy continuesto challenge the business of clients,pressure mounts for the patentpractitioner to help clients enjoy ahigher return on investment in dealsinvolving both acquisitions andlicensing-in of patent rights. By thesame token, those who representtarget companies need to learn the IPstrategies that help maximize incomefrom either takeovers or licensing-outs.

Attendees consistently grade theDue Diligence course and its facultywith some of the highest ratings of anycourse that PRG offers. This criticallyacclaimed course will help you raiseyour game to new levels, whether youare representing suitors or targets.

Sign up now for this 2 ½ daycourse. Sure, you’ll miss some time outof the office. But your return oninvestment will be a finely honedability to help clients see an increase intheir returns on investment.

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room and to facilitate making recommendationsto the client that may ultimately affect the priceand structure of the deal.

On Day 1, from approximately 2:30 to 4:45p.m., as currently estimated, we will discusspotential ethical issues and inequitable conducthazards that may arise during an IP duediligence investigation.

The concluding sessions of the course coverrisk-management issues that provide invaluable,practical suggestions for contractual

considerations, including effective uses ofrepresentations and warranties. Topics discussedin the course apply both to investigating atarget’s patent portfolio and to preparing aportfolio for suitors.

You’ll receive a thorough course book, chockfull of notes, examples, and case law.

The faculty—partners at Finnegan—are allpatent attorneys with extensive experience indue diligence investigations. The panel hasmany years of experience in IP practice and

expertise in several different areas of technology.Throughout the course, the faculty sharesinteresting “war stories,” observations, andpractical tips for conducting the investigation ina comprehensive and efficient manner.

In short, the knowledge you’ll gain from thiscourse will enable you to avoid due diligencepitfalls, while more effectively assessing andmanaging risks endemic in business transactionsinvolving complex IP rights and issues. G

he poolside Corkscrew is a full-service bar and

grill offering mouth-watering fare and fabulous

drinks in a casual and tropical atmosphere.

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8:15 a.m. – 11:30 a.m. (Sat)



• “Well done in all regards. Experiencedpractitioners, concrete examples, and quite goodand interesting.”

— Steven Berryman, Quarles & Brady LLP April 2010 attendee

• “Good overview of entire litigation process withenough insight and detail to be relevant to abroad audience.”

— Bill Hardie, W. L. Gore & Associates April 2012 attendee

The course is designed for and directed tocorporate counsel who have or expect to havepatent litigation supervision responsibilities;experienced litigators who seek to acquireincreased competence and abilities in thisexpanding practice specialty; and privatepractitioners with limited litigation experienceseeking to expand their practice.

The 2014 Patent Infringement Litigationcourse will include several new items on thecutting-edge of both advocacy strategies andsubstantive developments in the law. Theseinclude:

• A demonstration of how to conduct themost effective claim constructionpresentations at the highest level, includingthe use of two screens with synchronizedpresentations, animations, and integrationof technical tutorial with argument on claimterms;

• An in-depth discussion of the AmericaInvents Act and its impact on patentlitigation; and

• A bonus presentation of how to move abillion dollars across the table in patentlitigation without trial or appeal.

Legal ethics in the context of willfulinfringement issues will be presented from3:15 to 4:15 p.m. on the second day, ascurrently estimated.

Patent Infringement Litigation

Course Description

his course is the most practical, immediately usable patent infringement litigation courseever presented by Patent Resources Group (and perhaps by any institution). The focus ison patent litigation (not litigation in general). The course starts at the first concept of the

idea to litigate and the critical initial decision to file suit, continues through discovery and trial, andon to the end of post-trial motions, as well as initial defensive considerations and developing andimplementing defensive strategies throughout the case. The course includes a live demonstrationof a Markman hearing and a section on damages and injunctive relief.

15.0 Hours

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JAKE HOLDREITH WILLIAM MANNING AARON FARENKROG MARLA BUTLER

Course FacultyThe course is taught by highly experienced trial lawyers at Robins, Kaplan, Miller & Ciresi, LLP, whoserecord of victories in patent cases is truly remarkable and includes: Personal Audio v. Apple ($12 millionjudgment, post-trial motions pending); AMD v. Samsung (case involving seven affirmative patents and sixcounterclaim patents, confidential settlement); Pitney Bowes v. Hewlett-Packard ($400 million); Fonar v.General Electric ($110 million); Atlantic Richfield et al v. Unocal ($69 million); Honeywell v. Minolta ($96million); Honeywell v. JVC ($30 million); St. Clair v. Canon ($34 million); St. Clair v. Sony ($25 million);Grantley v. Clear Channel Communications ($89 million); TriStrata Technology v. Mary Kay ($43 million);Eolas v. Microsoft (confidential settlement after remand); Ricoh v. Pitney Bowes (defense verdict affirmedon appeal); General Motors v. General Electric (summary judgment of invalidity, affirmed on appeal).


The Patent Infringement Litigationcourse will show you how to developand execute a winning strategy tocoordinate all aspects of a complexpatent case and achieve your businessobjectives. We will take you throughthe whole process, from the firstconcept of the idea to litigate to post-trial motions.

ROBINS, KAPLAN, MILLER & CIRESI, LLPMINNEAPOLIS, MN • NEW YORK, NY

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lide down the 140-foot corkscrew slide at the Adventure Pool or catch

up on some leisure reading under Florida’s amazing blue skies.G

Course MaterialsThe course is based on the thoroughly-

researched textbook, updated annually by Robins,Kaplan, Miller & Ciresi L.L.P authors to reflect thelatest statutory changes, and critical rulings from

the Federal Circuit and district courts oninfringement, invalidity, damages, discovery,experts, and more. The course materials alsoinclude two resource volumes of supplemental,real-life illustrative litigation papers that support

the text. All three volumes will be handed out atthe course, along with a printed copy of the courseslides (with room for note taking) that will be aparticularly convenient and useful reference. G

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8:15 a.m. – 11:30 a.m. and 1:30 p.m. – 4:15 p.m. (Sun-Tues)


Comment from previous attendee:

• “[The course] provided very practicalinformation related to specification and claimspreparation, as well as amendments andarguments to make (and not to make) duringprosecution. I also appreciated the in-depthdiscussion of case law, both historical andcurrent cases, and how they impact biotechpractice.”

— Kathryn Hester Dunlap Codding P.C. April 2010 attendee

Course Focus

The course conveys both fundamentals andadvanced legal strategies in three major,interrelated areas: (1) Biotech and PharmaPatent Prosecution; (2) Hatch-Waxman andBiosimilars strategies; and (3) Pharmaceuticaland Biotech Patent Enforcement. These topicsare taught as a seamless whole by fourprincipals from Fish & Richardson PC, whoutilize frequent cross-references to highlightthe interplay among all the topics. For example,relevant patent case law (including the mostrecent biotech and pharma cases) is discussedfrom different viewpoints in the context of

Pharma & Biotech Strategiesfor Patent Prosecution,Hatch-Waxman & Litigation

Course Description

iscovering and developing new pharmaceuticals – whether biomolecules or traditional smallmolecules – entails extraordinary R&D costs (some estimate nearly $1B per drug) with noguarantee of success.

Likewise, biotech companies invest enormous resources in identifying and validating the targets andcreating platform technologies that are becoming more and more essential for the drug discoveryprocess. Without the protection afforded by patents and the various market exclusivities providedby Hatch-Waxman and the 2009 Biologic Price Competition and Innovation Act, the pharmaceuticaland biotech industries as we know them would not exist. At the same time, patents on researchtools and drug discovery targets can frustrate the early-stage research efforts of competitors seekingto discover novel drugs. In addition, the generic industry is increasingly aggressive in challengingpatents covering FDA-approved drugs, the boundaries of the Hatch-Waxman Safe Harbor areshifting, FDA reforms have limited the Orange Book as a weapon for pioneers, gene patenting isunder serious challenge, and the 2010 legislation authorizing an approval pathway for biosimilarsmay fundamentally change the life cycle management of biomolecule pharmaceuticals. Against thisbackdrop, biotechnology and pharmaceutical patent law in particular continues to evolve rapidly –perhaps faster than patent law in any other field – with numerous abrupt shifts and reversals ofpolicy just in the last decade.

16.5 Hours

D

Course Faculty • The faculty, all senior principals in Fish & Richardson’s vaunted life sciences group, hasmany decades of experience counseling pharmaceutical and biotech companies in patent prosecution,litigation, and Hatch-Waxman strategies. They teach these topics in the same way they approach them fortheir clients – as a seamless whole.

FISH & RICHARDSON PCBOSTON, MA • MINNEAPOLIS, MN • WASHINGTON, DC • WILMINGTON, DE

JANIS FRASER TERRY MAHN W. CHAD SHEARMARK ELLINGER


In an industry where billions ofdollars often hinge on the viability of asingle patent claim, you can't afford tomake mistakes. Brush up on the skillsneeded to prosecute, evaluate, andenforce pharmaceutical and biotechclaims in an ever-changing legal andeconomic climate. Learn cutting-edgetechniques for putting the Hatch-Waxman laws to work for yourcompany's benefit. This highly-regarded course is taught by anexperienced team who puts it alltogether for you.

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prosecution and enforcement.

An expert on the Hatch-Waxman andbiosimilars laws will provide a coherentoverview of these complex provisions; anotherlecturer will explain these laws’ criticalimportance to patent enforcement in thepharmaceutical and biotech fields; and otherswill show how these laws inform strategy inprosecution. Strategies for managing the lifecycle of patented drugs is a theme that echoesthroughout the course.

This course provides valuable, practicalinformation for the patent practitioner,whether in-house or in private practice, to usein maximizing protection of biotechnology andpharmaceutical inventions. The litigator willcome away with a comprehensiveunderstanding of the pertinent case law andconcepts necessary to enforce pharmaceuticaland biotechnology patents, or to recognize theweaknesses in improvidently granted patents.Company executives tasked with makingstrategic decisions based on their owncompany’s patent portfolio as well as those oftheir competitors will benefit immeasurablyfrom the broad understanding of biotech andpharmaceutical patent and Hatch-Waxman lawgleaned from this course.

Course Highlights

A key feature of the course is its coverage ofbiotechnology patent law, including bothestablished principles and currentdevelopments (such as the recently enactedoverhaul of the U.S. patent statute) in thisrapidly changing area of the law. In addition,the course highlights patent issues that crop upfrequently in the pharmaceutical arts wherebiotech and small molecule drugs overlap:issues such as enablement, written description,obviousness post-KSR, inherent anticipation,patent-eligible subject matter, overbreadth,functional limitations, claim construction,infringement based on in vivo conversion, andinfringement under the doctrine ofequivalents. The course will present claimstrategies that address the Supreme Court'slandmark holding in the Myriad case regardinggene patents, including repercussions for othertypes of biomolecules. Other important topicsinclude screening or diagnostic assays,methods of treatment, personalized medicine,polymorphs, transgenic animals, antibodies,RNAi, single nucleotide polymorphisms (SNPs),and reach-through claims. Concepts such asimpractical claims (claims difficult or impossibleto enforce) are illuminated with real and

hypothetical examples. The increasingimportance of the pharmaceutical label as away to extend the life cycle of an approveddrug is explored and specific strategiesproposed.

Since another PRG course (Chemical PatentPractice) ably covers the fundamentals ofchemical prosecution in great detail, thepresent course instead focuses on issues thatconcern biotechnology and pharmaceuticalinventions in particular.

Course Materials

Each attendee will receive an over-1000-page, two-volume set of course materials.Fondly known as the “Purple Book” forreasons that will be apparent once you receiveyours, these materials are updated by Fish &Richardson each year to keep them currentwith new cases, new U.S. Patent andTrademark Office directives, and evolvingtechnology. They cover many more topics, andin more depth, than the course itself. ThePurple Book is an invaluable resource – a verypractical “how-to” manual you will use everyday. G

njoy the fountains and palm trees as you takea stroll through the Resort's beautiful grounds.E

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8:15 a.m. - 11:30 a.m. and 1:30 p.m. - 4:45 p.m


This one-day course covers the following toolsfor patent prosecutors:

• Reissue

• Owner-requested ex parte reexamination

• Supplemental examination (new under theAIA)

• Other options such as certificate ofcorrection, disclaimer, and “corrective” claimconstruction

The course covers strategies, tactics, bestpractices and case studies for each tool. Inaddition, the course provides training for patentowners to:

Post-Grant Patent Practice: Reissue,Owner-Requested Reexamination,and Supplemental Examination

Course Description

eissue is an indispensable tool for every patent owner, especially those who find themselveshaving a valuable patent that no longer has a continuation pending.

Several recent developments in the law have made reissue a more attractive vehicle. Thosedevelopments include the following:

• Elimination of the requirement to say the “error” being corrected by reissue arose withoutdeceptive intent

• The ability to file a reissue application merely to add a new dependent claim

• The ability to file reissue continuation applications to broaden claims in new ways after the two-year broadening deadline

• The rule against recapture has been clarified and relaxed

• Reissue pendency is improving at the PTO

In addition to reissue, owner-requested ex parte reexamination remains an option to have a patentreconsidered in light of newly discovered prior art or overlooked patentability issues with respectto previously considered prior art.

The supplemental examination procedures created by the America Invents Act (AIA) is anotheroption that can sometimes quickly eliminate potential issues of inequitable conduct if relevantinformation was not considered during original prosecution.

6 Hours

R

KEVIN B. LAURENCE MATTHEW C. PHILLIPS

OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADTALEXANDRIA, VA

RENAISSANCE IP LAW GROUP LLPPORTLAND, OR

Course Faculty • The instructors are experienced in filing and prosecuting reissue applications. They wereactively involved in bar associations’ efforts to help the PTO design and implement the supplementalexamination proceedings created by the America Invents Act (AIA). They have written widely on such topicsfor Intellectual Property Today. Additionally, they have lectured on these topics since 2009 for PatentResources Group.


Reissue is an indispensable tool forevery patent owner, especially thosewho find themselves having a valuablepatent that no longer has acontinuation pending. Several recentdevelopments have made reissue amore attractive vehicle. In othersituations, owner-requested ex partereexamination or the new supplementalexamination procedures created by theAIA may good options to pursue.

G NEW COURSE

NEWCOURSEG

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• Choose among ex parte reexamination,reissue and supplemental examination tobest strengthen and improve a patent

• Avoid, when possible, intervening rights thatarise via the cancellation or amendment ofclaims

• Understand how and when theseproceedings may be merged

• Select information to be disclosed to the PTOfrom concurrent litigation or other PTOproceedings

• Understand the timing of events in theseproceedings so that you are not caught offguard

• Navigate the maze of procedures to avoidunfortunately common mistakes

• Master the recapture rule

• Understand when and how to utilize acertificate of correction, disclaimer, or“corrective” claim construction, rather thanreexamination, reissue or supplementalexamination

njoy breathtaking views of the Resort’s natural beauty from your casuallyelegant guest room, the perfect place to relax or catch up on business.E

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8:15 a.m. – 11:30 a.m. (Tues)



• “This course provides a practical framework forusing post-grant tools from both the perspectiveof the owner and challenger, and insight on howthey work together.”

— Matt Rabdau IP Counsel, Fluke Corporation October 2012 attendee

• “The materials are outstanding. I will use asreference materials in the future. Lecturerswere wide open to questions and very responsive.Interspersing of war stories and examples keptthe presentation interesting.”

— Charles Burpee Warner Norcross & Judd LLP October 2009 attendee

Ten years ago courts were essentially the solearbiters of patent validity. About 5-6 years ago,reexamination suddenly emerged as a popularmeans for challenging patents, either alone oralongside court battles. The reasons for thatshift were simple: Would you rather bring yourvalidity attack before an experienced patentexaminer with technical expertise in the PTO’sCentral Reexamination Unit where claims aregiven their broadest reasonable interpretationand do not enjoy a presumption of validity, or ajury in the Eastern District of Texas? The answerbecomes all the more obvious when oneconsiders that a reexamination can cancel claims,eliminate liability for past infringement, createintervening rights to continue accusedinfringement in the future, open up design-around opportunities, create a more favorableprosecution history, defeat a charge of willfulinfringement, help avoid an injunction, bolsteran inequitable conduct defense, and sometimesenable a stay of expensive litigation. All of thiscan be achieved at a small fraction of the cost of

Post-Grant Patent Practice:Review and Reexamination

Course Description

he first day of this two-and-a-half-day course focuses on ex parte reexamination and alsoaddresses 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 coursecovers strategies, tactics, best practices and case studies for review and reexamination. The courseis for both patent practitioners who appear before the PTO in these proceedings, as well as litigatorswho must deal with the increasingly common role of PTO proceedings in the context of disputes.

15.0 Hours

T

KEVIN B. LAURENCE MATTHEW C. PHILLIPS

OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADTALEXANDRIA, VA

RENAISSANCE IP LAW GROUP LLPPORTLAND, OR

Course Faculty • The instructors are experienced at representing both patent owners and accused infringersin review proceedings and reexaminations. They have taught the Post-Grant Patent Practice course for fiveyears and continuously update their treatise and slides to provide practical advice based on current casesinvolving adversarial post-grant matters. They were actively involved in bar associations’ efforts to help thePTO design and implement the new review proceedings created by the America Invents Act (AIA). They havewritten widely on review and reexamination topics for Intellectual Property Today.


The battleground of patent validity isshifting from courts to the PTO. Reviewproceedings, including post-grantreview and inter partes review, arepowerful, fast-track trials before thePatent Trial and Appeal Board. Reviewproceedings offer several advantagesover validity challenges in a courtproceeding including cost, predictability,effectiveness, speed, and the ability topursue strategies that would not befeasible in court. This course exploresthese factors and provides training forparticipating in review proceedings.

Reexamination remains populareither alone or alongside court battles.The PTO’s Central Reexamination Unitprovides a forum that can result inmany favorable outcomes, at a smallfraction of the cost of litigation.Whatever side of the battle you are on,you must know how to engage in thenew battlefields called review as well asthe existing battlefield calledreexamination.

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litigation or advantageously deployed inconjunction with litigation.

The Patent Trial and Appeal Board has shiftedthe balance in favor of the PTO as the patentvalidity battlefield of the future by creating newmore powerful, fast-track, litigation-like reviewproceedings, including post-grant review andinter partes review. Inter partes review providesan opportunity to challenge the validity of apatent twice: first at the PTO based on printedpublications and subsequently in litigation basedon other available grounds. Stays are beinggranted liberally when inter partes reviews arefiled in light of the statutory requirement forrapid completion of these new proceedings. Asa result, validity challenges are proceeding inserial fashion. In the first phase of a bifurcatedvalidity challenge, complicated argumentsregarding the prior art can be rapidly resolved bytrained specialists at the PTO, whereas in thesecond phase, less technical argumentsregarding commercial activity or otherinvalidating grounds can be resolved by a judgeor jury. This sequential approach can simplifyclaim construction and narrow issues for aninfringement portion of the litigation, and thusmay reduce overall costs. Lead counsel in aninter partes review proceeding must be aregistered patent attorney, but it is possible forlitigation counsel to participate in the proceedingeven if the litigation counsel is not registered.Integrating the inter partes review and litigationteams can provide a smooth transition to thelitigation upon completion of the reviewproceeding.

Reexamination has often been referred to asa second bite at the apple, but the bite sizeprovided by inter partes review is more on parwith that of litigation due to its provisions forlimited discovery. The comparative weakness ofex parte reexamination is offset by its absence ofestoppel implications. Indeed, the deepestconcerns regarding inter partes review often

focus on its legal estoppel provisions thatprevent a challenger who is unsuccessful in aninter partes review from attacking a claim in anyforum based on other printed prior artpublications. This concern overlooks theadvantages of this new proceeding and does notacknowledge that failure to invalidate a claim inlitigation results in much harsher estoppel. Theestoppel of inter partes review will have aconsiderably smaller scope than the estoppel ofa failed district court challenge. In light of thecomplexity of many prior art arguments and thebenefits of the serial validity and infringementcases, consideration of a challenge at the PTOshould not be a back-up plan, as reexaminationoften is. Rather, inter partes review should beused prior to or concurrently with litigation.

For patent challengers, the course providestraining to:

• Analyze the advantages and disadvantagesof review and reexamination compared tolitigation

• Make well-informed choices between reviewproceedings and reexamination

• Understand the critical role of review andreexamination in the context of a disputeand develop strategies based on anticipatedor concurrent litigation

• Appreciate estoppel implications – bothofficial and unofficial – of review andreexamination

• Utilize review and reexamination to obtain astay or other benefits in related litigation

• Unravel the AIA’s review statutes anddecipher the PTO’s review rules tounderstand how reviews are really conducted

• Prepare a petition for review or a request forreexamination that complies with allrequirements and gets granted

• Learn what the reexamination statistics reallymean

• Advantageously utilize the differentstandards applied for claim interpretation atthe PTO and claim construction in litigationas well as the differing burdens of proof

• Recognize possible changes to theconstruction of the claims in the litigationbased on the review or reexamination thatopens up design-around opportunities,creates a more favorable prosecution historyfor the purpose of claim construction, orimpacts estoppel theories

• Create intervening rights that eliminateliability for past infringement or allowcontinuation of accused infringement in thefuture

• Tactically use serial ex parte reexaminationrequests

• Correctly and strategically use petitions anddeclarations

• Understand the repercussions that reviewand reexamination can have on settlement

The course balances the perspectives ofpatent challengers and patent owners so theabove items are also presented from the viewof the patent owner. Additionally, the courseprovides training for patent owners to:

• Avoid, when possible, intervening rights thatarise via the cancellation or amendment ofclaims – or from mere argument regardingclaim scope

• Select information to be disclosed to the PTOfrom concurrent litigation or other PTOproceedings

• Understand the timing of events in all post-issuance PTO proceedings so that you are notcaught off guard

• Navigate the maze of review andreexamination procedures to avoidunfortunately common mistakes

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njoy a delicious meal and relax as you overlook the

water and palms blowing in the Florida breeze.E

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8:15 a.m. – 11:30 a.m. (Sat)


The broad spectrum of available softwarepatent protection opportunities that appearedavailable after State Street Bank and AT&T v.Excel was questioned in the Bilski decisions. Inits 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. TheSupreme Court found this “machine-or-transformation” test useful but too narrow. Itfell back on general principles of “abstractness”.It also declined to exclude all business methodsfrom patentability, but it seemed to invite theirclose scrutiny. Courts as well as the USPTOcontinue to struggle with the application of theSupreme Court's decision and the CAFCdecision it largely affirmed. Practitioners need tounderstand the signposts left by the Bilskidecisions and those that attempt to apply theirguidance.

Software-based inventions face another issue.Recent cases have suggested that infringementmay be avoided when infringing activity crossesborders or multiple parties are involved in theacts or elements comprising infringement of aclaim. The doctrine of “joint infringement”(a/k/a“divided infringement”) as developed inBMC Resources, Inc. v. Paymentech,Muniauction Inc. v. Thomson Corp. and othercases poses particular problems for provinginfringement as more computer-basedinventions use processors, storage andspecialized data processing services of others,sometimes located in the “cloud”. Usingresources in the “cloud” can involve multipleactors and jurisdictions.

The course and text address why differentsoftware applications (e.g., Internet-relatedsoftware) require special claim drafting,

Procuring and Enforcing BusinessMethod and Other Software-BasedPatents After Bilski and BMC

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 heldnot 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 patentsin particular. Specifically, a new inter partes review proceeding is available during litigation fordefendants to challenge certain business method patents at the USPTO on a wide variety ofinvalidity grounds.

Course Description

15.0 Hours

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DORSEY & WHITNEY LLPMINNEAPOLIS, MN

WINTHROP & WEINSTINE

MINNEAPOLIS, MN

ALDO NOTOANDREWS KURTH LLPWASHINGTON, DC

STUART HEMPHILL DEVAN PADMANABHAN

Course Faculty • The faculty for this course has prosecuted scores of software-related patents, for businessmethods and more traditional computer-based technical subject matters, over a collective USPTOexperience of more than 60 years. Each has also been involved in litigation and licensing of software-related patents. They can provide a wide range of viewpoints from which to consider strategies forprocuring, exploiting and enforcing software patents.


Director Kappos has recently stated thatpatents on software are “every bit as welldeserved” as patents on air flight, electric bulbsand such more traditional inventions. At thesame time, he acknowledges past, ofteninadequate and inconsistent examination ofsoftware patents, but points out improvementsat the USPTO for increasing examinationquality. This is a critical time to get an importantupdate on software patent law, given:

• The impact of the America Invents Act (AIA).

• The need to understand the post-Bilskidecisions that attempt to apply its principles(Research Corporation; Ultramercial;Prometheus; et al.).

• The decisions analyzing infringement whencomputer-based methods or other activity spanborders (Research in Motion; Transocean).

• The decisions finding no infringement whenmultiple actors are involved in completingthe infringement (Muniauction; Akamai).

• Patent damages in software cases have beenimpacted by the decisions of Judges Posnerand Alsup.

• The need to understand how the USPTO andcourts are using indefiniteness as a basis forrejection or invalidity of software claims.

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prosecution or litigation techniques. Claim stylesand limitations designed to meet the somewhatunclear post-Bilski §101 standards arediscussed. This course also explores thecountercurrents arising from concern about thequality of some business method patents andfrom the open source movement.

Legal ethics in the context of duty ofdisclosure under 37 CFR §1.56 and USPTOconflict of interest issues will be presented from9:00 to 11:00 a.m. on the third day, as currentlyestimated.


• “Speakers were awesome, articulate, organized,knowledgeable and friendly.”

• “The material covered was very focused andpractical. Thank you!”

• “Examples of claim types were great!”

Course Materials

At the Course, attendees will receive acomprehensive text and slides, written by thedistinguished faculty. G

lay a round of golf amid beautifully preservednatural surroundings on a world-class course

designed by golf legend Raymond Floyd.P

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8:15 a.m. – 11:30 p.m. and 1:30 p.m. – 4:45 p.m.


Patent professionals in portfolio-buildingorganizations stand at a crossroads, then,having to decide whether to accept a currentsystem that addresses less than all of theseobjectives or to begin rethinking the tools andprocesses they use in the building of theirportfolios. This course provides practicalknowledge that enables the patentprofessional to set the organization down thesecond path, toward implementation of acomprehensive, systems-based approach toportfolio development and management thatis designed for the realities of the modernpatent world.

The pressures of case law chaos, first-to-fileand budget demands require theimplementation of a portfolio developmentand management system that is strategic,

timely and efficient. “Living with” a corporatesystem designed for yesteryear will only allowan organization to respond to less than all ofthese pressures and, over time, will necessarilyproduce a less valuable portfolio. The currentpatent environment demands a rethinking ofeverything from idea capture anddocumentation to review and evaluation forfiling, and from filing strategies to expectationsplaced on outside counsel.

The course provides a detailed overview ofa model system and examples of itsimplementation in various types oforganizations. Attendees will receive valuableand practical knowledge that can be put to usewhile designing new or modifying existingsystems in their own organization. Specifictopics discussed include:

Strategic Patent Portfolio Managementin the Era of Legal Chaos, First-to-Fileand Budget Demands

Course Description

he reign of Federal Circuit chaos continues and now we’ve jumped into the brave newworld of first-to-file. Economic realities have served as a backdrop to this upheaval, placingheightened 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 continueto live with antiquated or non-existent portfolio development and management systems. Whilethey still value and desire strong patent protection in this strange new world – filings continue toreach record levels – organizations now require faster delivery of higher quality applications forless. Meeting these three objectives is proving difficult for many, though, as simple demands thatoutside counsel do more for less reach their limit.

6.0 Hours

T

Course FacultyMatt Buchanan has helped numerous startup and established companies design and implement effectiveportfolio development and management systems. He has developed a thriving consulting practice in thefield that complements his active U.S. and international patent preparation and prosecution practice.

BUCHANAN NIPPER LLCPERRYSBURG, OH

MATT BUCHANAN

NEWCOURSEG


The course provides a detailedoverview of effective corporate portfoliodevelopment and management systems,from invention capture to foreign filingand maintenance fee decisions. In-housepatent counsel and other professionalsresponsible for designing, implementingand/or managing systems for capturing,reviewing and evaluating inventions andpatents will gain practical knowledgethat will aid in the designing or revisingof their own corporate systems.Attorneys in private practice that helpclients at a systems-level will also findthe course beneficial.

G NEW COURSE

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• Forms for documenting ideas

• Guidelines for deciding whether protectionis desirable

• Patent committee structure, make-up andresponsibilities

• Application filing strategies, includingoptimized chaining of provisional applications

• Expectations to place on outside counsel

• Idea recycling

• Portfolio review

• Leveraging the system through knowledgedissemination within the organization.

Course Materials

Attendees will receive a comprehensive set ofslides. G

et your cares slip away in the soothing spa pool while overlooking

the green lushness of the natural Florida surroundings.L

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PRG’s Fall HotelHyatt Regency Coconut Point Resort and SpaBonita Springs, FL • March 30-April 5, 2014

5001 Coconut RoadBonita Springs, FL 34134

Reservations: (888) 421-1442 or (239) 444-1234

PRG’s 2014 Annual SpringAdvanced Courses Program will beheld at the elegant Hyatt RegencyCoconut Point Resort and Spa inBonita Springs, FL.

For information and to make your room reservationonline, please go towww.patentresources.com/HotelOverview.aspxand click on the Hotel Information link for HyattRegency Coconut Point Resort and Spa.

Room reservations must be made by March 10,2014. When making your reservation, be sure toidentify yourself as a Patent Resources Groupattendee to obtain the special PRG rate.

Receptions for Attendees and Faculty:PRG receptions provide an opportunity fornetworking, plus delicious, complimentaryhors d’oeuvres and beverages on the firstevenings of class: Sunday, March 30 andThursday, April 3. Spouses, children andguests of attendees and faculty are welcomeand are certain to have an enjoyable time.

Transportation: The Hyatt Regency CoconutPoint Resort and Spa is about 16 miles(approximately 25 minutes) south ofSouthwest Florida International Airport(RSW), which is served by a variety of majorairlines with nonstop flights from many citiesthroughout the United States. The Resortoffers on-site valet parking andcomplementary self-parking for guests.

ituated on 26 lush acres, the HyattRegency Coconut Point providesstunning views of the Gulf Coast, alongwith casual elegance and southern-

style hospitality. The Resort features theworld-class Stillwater Spa; the 18-hole RaptorBay gold course, designed by Raymond Floyd; a5,000-square foot lagoon-style Adventure Poolwith a 140-foot corkscrew water slide; hottubs; and an adults-only heated lap pool.Hotel guests may also take a short ferry ride tothe Resort's private Gulf Coast beach at BigHickory Island, arrange for a variety of waterand wildlife excursions in Estero Bay, or kayakthrough the mangroves of the Estero River.

The Hyatt Regency Coconut Point boasts sevenrestaurants and bars, including the TanglewoodRestaurant (serving breakfast, lunch, anddinner and featuring international cuisine) andthe casual Tarpon Bay Restaurant with lakeand fountain views. Hotel facilities alsoinclude a full-service business center, a 24-hourStay Fit fitness center, wireless internet access,a video arcade, and tennis courts.

For more information about the Hyatt RegencyCoconut Point Resort and Spa, go to:http://www.coconutpoint.hyatt.com

An Outstanding Venue!

S

DON'T MISS THIS DEAL!

Room rate: The sleeping room rate availableto PRG attendees is only $259.00 per night,single or double, plus tax. This rate is 30%less than the Resort’s standard rateduring this period!

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Hyatt Regency Coconut Point Resort and SpaREGISTRATION

Bonita Springs, FL • March 30-April 5, 2014

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:

Charge $______________________ to:

❑VISA ❑MasterCard ❑American Express

❑Corporate Card ❑Personal Card

❑Government Card

Corporate Customer Code (if applicable) ___________________

Credit Card # _______________________________

Exp. ________/__________

I am an ACTIVE member of a State Bar that requires mandatory CLE hours. My State(s) & my Bar ID number(s) are:

1. __________ _________________________ 2.___________ ______________________ STATE ID NO. STATE ID NO.

Name ___________________________________________ Title________________________

Tel _____________________________________________ Fax ________________________

email ________________________________________________________________________

Organization ______________________________________ Suite or Mail Stop No.___________

Street Address _________________________________________________________________

City/State ________________________________________ Zip Code ____________________

❑MR. ❑DR. ❑MS. ❑PROF.

❑HOME❑ORG.

PLEASE PRINT

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, payableto Patent Resources Group, Inc., or by credit card(charges are authorized by your completion ofthis form). The course tuition does not includehotel accommodations or meals, but doesinclude all instructional materials, and morningand afternoon refreshments, as well as PRG’sreception-cocktail party.

Early Registration Deadline: February 10, 2014Final Registration Deadline: March 10, 2014

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

March 30-April 1, 2014 (Sun-Tues)

❍ Art & Science of Patent Searching —Patentability, Validity & Infringement

❍ Art & Science of Patent Searching andOptional Patent Searching Workshop(combined course and workshop is$2,590 through February 10, 2014 and$2,690 after that date)

❍ Chemical Patent Practice

❍ “Designing Around” Valid U.S. Patents

❍ Patent Due Diligence in the AIA Era

❍ Pharma & Biotech Strategies for PatentProsecution, Hatch-Waxman, & Litigation

❍ Post-Grant Patent Practice: Review andReexamination

April 2, 2014 (Wed)

❍ GEXPANDED AND UPDATED! America Invents Act: MonumentalChanges, the Consequences and theUnanswered Questions

❍ GNEW COURSE Post-Grant PatentPractice: Reissue, Owner-RequestedReexamination, and SupplementalExamination

❍ GNEW COURSE Strategic PatentPortfolio Management in the Era of LegalChaos, First-to-File and Budget Demands

April 3-5, 2014 (Thurs-Sat)

❍ Crafting and Drafting Winning Patents

❍ Drafting Patent License Agreements

❍ Federal Circuit Law (2012-2014)

❍ Patent Drafting & Prosecution Based ona Single EPO/USPTO Specification

❍ Patent Infringement Litigation

❍ Procuring and Enforcing BusinessMethod and Other Software-BasedPatents After Bilski and BMC

One-Day Courses:Three-Day Courses:Tuition for each three-day course is $2,195

through February 10, 2014and $2,295 after that date

Tuition for each one-day course is $995.

Please note that the faculty members listed for each course are subject to change prior to the actual course date.

Loyalty Program memberssave $200 on tuitionfor 3-day courses and

$100 for 1-day courses

For information about registration deadlines;cancellation, transfer and substitution privileges; CLE;and other details, go to: www.patentresources.com

Brochure Code: A14M1

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Register online now at www.patentresources.com

January 27-31, 2014Patent Bar Review CourseDallas, TXDoubletree by Hilton Near the Galleria

March 10-14, 2014Patent Bar Review CourseAtlanta, GAExecutive Conference Center

March 30-April 5, 2014Annual Spring ProgramAdvanced Courses in Patent LawBonita Springs, FLHyatt Regency Coconut Point Resortand Spa

May 19-23, 2014Patent Bar Review CourseWashington, DC (Arlington, VA)Hilton Crystal City

June 9-13, 2014Patent Bar Review CourseNew York, NYExecutive Conference Center

June 9-11, 2014Patent Administration:A Foundation for SuccessNew York, NYExecutive Conference Center

July 8-10, 2014Patent Administration: A Foundation for SuccessWashington, DC (Arlington, VA)Hilton Crystal City

July 8-11, 2014Winning Patents WorkshopWashington, DC (Arlington, VA)Hilton Crystal City

August 4-8, 2014Patent Bar Review CourseChicago, ILFour Points by Sheraton

September 27-October 2, 2014Annual Fall ProgramAdvanced Courses in Patent LawLas Vegas, NVCaesars Palace

November 2014Patent Bar Review CourseWest Coast LocationCheck PRG website for dates, city, andvenue

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atent Resources Group, thechoice of every generation of

patent attorneys since 1969, nowoffers customized ON-SITE training forselected courses on a negotiated basis!

This is the perfect option forcorporations that have 10 or moreemployees who need the same training.We'll come to your location and willcustomize the content as needed tomeet your specific needs. If you prefer,we can also offer these courses remotelythrough webconferencing orvideoconferencing.

Contact SVP-Sales Ted Klekman at (916) 404-3908 to learn more.

P Art and Science of PatentSearching: Patentability,Validity & Infringement

This course comprehensivelyteaches how to conduct aprofessional patent search. The materials and content willbe understood by anyone, fromthe inexperienced to advancedpractitioners. The course isperfect for patent attorneys andagents, inventors, paralegals, orresearch managers — anyonewho will be involved inconducting searches orcommissioning searches.

*Interested in having other courses taught on-site at your location? Ask us!

PRG is currently offering these courses* ON-SITE:

America Invents Act: MonumentalChanges, the Consequences andthe Unanswered Questions

The content of this course wascreated with the goal of assistingpatent attorneys and agents in fullyunderstanding the AIA, itsconsequences, nuances,ambiguities, and unresolved issuescreated by the new statutorylanguage. Practitioners must knowthe new law, but must also be ableto determine when the AIA appliesand when pre-AIA law applies.

PATENT RESOURCES GROUP1 7 2 5 J A M I E S O N A V E N U E

A L E X A N D R I A , V A 2 2 3 1 4

Pre-sort Std.U.S. Postage

PAIDWAM

Unparalleled Courses at an Amazing Venue!Hyatt Regency Coconut Point Resort and Spa

Bonita Springs, FLMarch 30-April 5, 2014

A14M1Patent Resources Group provides the industry's leading patent law education programs. The company hastaught patent law and related courses to 40,000 patent attorneys, agents, engineers and scientists since 1969.

Register today at www.patentresources.com!

ANNUAL SPRING PROGRAM


IN PATENT LAW

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