Strategies to Withstand USPTO 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, April 14, 2010 ~ 1:00pm-2:30pm EDT
Price: $297

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

This CLE webinar will review how the obviousness standard has been applied by the court and the USPTO since the Supreme Court’s decision in KSR v. Teleflex. The panel will outline best practices for patent counsel to avoid obviousness rejections and defend against attacks on patent validity.

Description

The Supreme Court’s 2007 decision in KSR v. Teleflex established a new standard for obviousness. The Court criticized the Federal Circuit’s teaching-suggestion-motivation (TSM) test and focused on criteria for examining patentability.

The Court changed the framework for evaluating obviousness but left unanswered questions. Much insight can be gained from how the courts and the USPTO Board of Appeals have applied the obviousness standard since KSR.

Companies and counsel must understand how KSR is being applied and the steps to take and to avoid when preparing and prosecuting patents to withstand obviousness rejections and attacks on validity.

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

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

Benefits

The panel will review these and other key questions:

• How have the Graham v. John Deere factors been applied following the KSR decision?
• Under what circumstances has the obvious-to-try standard work 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

Ronald E. Cahill, Partner
Nutter McClennen & Fish, Boston
He manages the firm’s Intellectual Property Group. He concentrates his practice in patent portfolio development, patent litigation, and related counseling. He also takes lead roles in patent infringement and patent validity opinions, re-examination and re-issue proceedings, patent interferences, corporate IP due diligence undertakings, and advising clients in foreign patent opposition proceedings.

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.

Kevin J. Meek, Partner
Baker Botts, Austin, Texas
He has broad experience in patent litigation, prosecution and licensing and trademark and copyright prosecution and enforcement. He handles a variety of corporate transactions centering on technology transfers and intellectual property rights. He prepares and prosecutes patent applications covering a broad. He is the firm wide deputy department head for the firm’s intellectual property department.

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.