Prepare and Prosecute Patent Applications for Licensing and Litigation Value

Patent practitioners who engage in patent preparation and prosecution and would like to enhance the litigation and licensing value of patents they prepare and prosecute are encouraged to attend this program.

Attendees will learn how to prepare claims with appropriate scope that are infringed by a single actor, what actor to target, and how to draft an understandable specification to support the claims. Discussions will include how amendments and arguments made during prosecution can be used to interpret the claims for both literal infringement and under the doctrine of equivalents, and how to craft amendments and arguments with that in mind. Furthermore, attendees will learn how to prepare a claim chart as a tool to support licensing and litigation. Due consideration will be given to tasks that are appropriate for both attorneys and agents, and those tasks—such as infringement/right-to-use opinions—that are solely the province of attorneys.

If you are a patent practitioner with basic and/or intermediate experience in patent preparation and prosecution, this program will offer substantial value and tips and best practices that you can put into immediate practice.

Learning Objectives:

• Comprehend how to interview the inventors to draw out different embodiments and applications
• Discover how to draft the claims to have appropriate scope and to be infringed by a single actor (while complying with Section 101) (and what actor is best to target, e.g., competitors not customers)
• Explore how to draft the specification to be understandable and to support the claims
• Understand the effect of amendments and arguments on literal infringement
• Evaluate the effect of amendments and arguments on infringement under the doctrine of equivalents
• Investigate the use of a claim chart to assert a patent/defend against a patent assertion