Strategies to Withstand Obviousness Rejections and Attacks on Patent Validity

A live 90-minute CLE webinar/teleconference with interactive Q&A
Sponsored by the Legal Publishing Group of Strafford Publications
Wednesday, January 12, 2011 ~ 1:00pm-2:30pm EST
Price: $297

Please note: You will be taken to the Strafford website to complete your order.

This CLE webinar will provide patent counsel with a review of the USPTO’s new post-KSR guidelines and how the courts and the USPTO are applying the obviousness standard. The panel will outline best practices for patent counsel to avoid obviousness rejections and defend patent validity.

Description

The Supreme Court’s 2007 decision in KSR v. Teleflex established a new standard for obviousness. In Sept. 2010, the USPTO published updated guidelines, which provide reasons and circumstances under which claims may or may not be found obvious.

In KSR, the Court changed the framework for evaluating obviousness, but it left a number of unanswered questions. Counsel can gain practical insights from how the courts and the USPTO Board of Appeals have applied the obviousness standard since KSR.

Listen as our authoritative panel of patent attorneys examines the obviousness standard, how the courts and the USPTO have applied KSR, outlines steps that companies and counsel should take to withstand obviousness rejections, and offers best practices for defending against obviousness attacks in litigation.

Outline

1. Obviousness standard for patents
   • KSR v. Teleflex
   • Application of Graham v. John Deere factors
   • Updated USPTO examiner guidelines
2. Treatment post-KSR
   • In the courts
   • In the USPTO
3. Patent prosecution post-KSR
   • Responding to rejections
   • Responding to attacks on validity

Benefits

The panel will review these and other key questions:

• What insights into how the USPTO will perform obviousness analyses do the new USPTO Guidelines provide?
• Under what circumstances has the obvious-to-try standard supported a finding of obviousness—and when has it worked to nullify such a finding?
• What are the steps that patent applicants can take to stand up to obviousness rejections?

Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Karen Canaan, Attorney
CanaanLaw, Menlo Park, Calif.
She prepares and prosecutes patent applications for clients in the biotechnology, chemical, pharmaceutical, and medical arts industries. She advises on strategies for developing international patent portfolios, counsels on third party patent positions, and assists in obtaining licensing agreements. has experience preparing patent legal opinions, including invalidity and non-infringement opinions.

Paul Davis, Partner
Goodwin Procter, Menlo Park, Calif.
He has a strong patent background in the medical device, electrical engineering, photonics, networking, e-commerce and telecommunication industries, focusing primarily on U.S., international and national phase patent prosecution and strategic counseling services. He has significant experience in litigating intellectual property issues for information technology companies.

Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
He has 35 years of experience in the field IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served lead counsel in many patent interferences.

Register Today!
Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.

Continuing Legal Education
Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.

Please note: You will be taken to the
Strafford website to complete your order.