Preparation, Prosecution, and Commercialization of a Patent

The patent process is complex, with many steps from initial invention disclosure to filing to prosecution and allowance; many attorneys may feel overwhelmed by this process. This course will discuss the steps of obtaining a patent, including the Appeal process and actions taken after issuance. Attendees will be introduced to the online Manual of Patent Examination Procedure, an invaluable reference for any attorney considering sitting for the Patent Bar exam. We will also review information available on the Patent Center and WIPO websites to show how to compare claim scope and format in different countries of interest.

Attendees will learn how to search the public domain for related art that may be relative to the patentability of the product disclosed in the invention disclosure form. A summary of the best patent drafting processes will be provided. This course will also cover using an expired patent in the public domain directed to a motorized surfboard as a model, reviewing the examination process, and reviewing the official action and the applicant’s response. Determination of Inventorship and Ownership, including assignment of the invention to the proper party, will also be discussed. Commercialization of the patent through licensing will also be addressed.

Any attorney interested in the patent process should attend this program. In-house counsel, patent counsel, and those interested in technology transfer would benefit from the information provided. Lawyers with a technical background but practicing in other areas of the law should also attend to understand how different day-to-day patent prosecution is from litigation practice as a career.

This course is mainly designed for attorneys with experience in patent litigation, but attorneys interested in the patent process are encouraged to attend.

Learning Objectives:

• Gain familiarity with the patent process and valuable sources to facilitate the process
• Identify inventive subject matter, drafting specifications and claims directed to that subject matter
• Examine the Patent Prosecution before the USPTO from filing to allowance
• Explore the commercialization via exclusive or non-exclusive licensing