Join us at the Hyatt Regency Crystal City in Arlington, VA on August 13-14, 2012 for the PRG Summer Advanced Courses Conference, where we’ll be offering two in-depth one-day courses:
- America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions
- When, Why and How to Effectively Appeal to the USPTO Board of Patent Appeals and Interferences
We’ve already highlighted our popular course on the America Invents Act, which will be available at both the Summer and Fall 2012 Advanced Courses Conferences. The course highlighted today is a special one-day course that will only be available at the Summer Advanced Courses Conference: When, Why & How to Effectively Appeal to the USPTO Board of Patent Appeals and Interferences (USPTO BPAI).
This course was first offered in 2008 and continually earns the admiration of attendees year after year for its in-depth analysis and excellent faculty. This course will include coverage of the new appeals rules that became effective on January 23, 2012. Continue reading to learn all the course details on When, Why & How to Effectively Appeal to the USPTO BPAI.
Course Information – When, Why & How to Effectively Appeal to the USPTO BPAI
- Date: August 14, 2012
- Projected CLE: 6.0 hours
- Instructors: Joseph Lucci and Bill Smith.
- Course Times: 8:45-Noon; 1:15-4:30 (Tues)
This definitive course on appeals practice before the Board was prepared and will be presented by William F. Smith, who, in 2005, completed 19 years of distinguished service as an Administrative Patent Judge on the Board. Bill brings to PRG the wisdom and insights in effective practice before the Board that can only be provided by one who served so long and so effectively as a Board member. Bill will be assisted by his colleague, Joseph Lucci, a seasoned patent litigator who specializes in patent litigation, prosecution, interferences and client counseling.
Among the subjects covered in the course are the following:
- Determining when, during the prosecution of the application, it is prudent to file an appeal, considering the nature of the examiner’s rejection(s) and the legal and technological issues involved (e.g., identifying and appealing inappropriate obviousness rejections in the post-KSR USPTO).
- How to respond to Office actions in a way that will enhance success before the Board.
- Claim construction by the Board.
- The Board’s treatment of Rule 131 and 132 evidence.
- Pre-appeal brief conference requirements and strategy under the USPTO’s new rules.
- Analysis of the new rules governing ex parte appeals to the Board.
- How to write a compliant and effective brief to the Board, including strategies in presenting facts, arguments and authorities.
- A detailed analysis of each of the required parts of a brief.
- How to deal with the new presumption of correctness of the examiner’s rejection(s), including how to establish examiner error.
- Taking apart the examiner’s answer and writing an effective reply brief.
- Making an effective oral argument at the hearing.
- Reviewing and responding to the Board’s decision, including how to respond to both stated and unstated new grounds of rejection.
- How to avoid winning the appeal and yet – inadvertently – losing the case.
- Further judicial review, i.e., to the CAFC or the U.S. District Court.
- Patent term adjustment issues – how winning or losing the appeal affects your patent term in significantly different ways.
Use the following links to:
- Learn more about this course.
- View and register for Summer Advanced Courses.
- Read the Brochure describing all Summer Advanced Courses.
- Learn more about the Program Hotel.
- Learn about special Loyalty Program pricing at our 2012 Advanced Courses programs.