You are on page 1of 2

I am working on two webinars scheduled for Feb 24 and March 23 on the topics attached.

I am in the process of soliciting speakers and PowerPoint authors for the webinar.

Additionally these topics are chapters in an upcoming book I am writing for the ABA entitled Secrets of Effective Patent Drafting and Prosecution, and if you have interest, I can include materials you prepare into this book with proper attribution of course.

Given the tight timelines you will need to let me know if you are interested by February 1 for the first webinar, and February 15 for the second webinar.

A first draft of your slides and presentation would be due on February 8 for the first webinar, and March 1 for the second webinar. Assume you'll need to devote about 30-40hrs to prepare the slides, practice the presentation, and deal with logistics such as teleconferences etc.

Please find attached copies of the topics for the webinars, and if you are interested, please let me know which topics you can prepare. I'll follow-up with a teleconference so that we can elaborate what should be prepared for each topic.

If interested, please contact me directly or call me at is 202.455.5349; proberts@foley.com<mailto:proberts@foley.com>. Presentation 1, the process before drafting: 1. How and what to explain to a client about what a patent is, what it provides, what claims are, what prior art is, what inventors are. Which questions to send in advance of the disclosure meeting. 2. How to budget a patent application so that the client is happy with the final product. How deal with incomplete initially incomplete disclosures and how to deal with later discovered errors in inventors. How to set time constraints so that the client can supervise its inventors properly. How to offer them options for drafting the applications? When to follow up with clients regarding questions and revisions. Inventor terminology and level of the reader. 3. How to do an intake interview? Often the first meeting is critical to understanding the invention. This topic focuses on what to say, what to ask, how to take notes, ask them what to

claim, when to provide them with prior art. Get the list of inventor info at the first meeting, including who invented what. 4. Tips on what to look out for in the invention disclosure. Benefit of a one hour search after disclosure meeting. Explaining what a vaporware application is and how to avoid it. Avoiding the passive voice and pronouns. Presentation Drafting the Application: 1. Writing the claims. Claims and drawings reviewed before disclosure. When you can use the claims first strategy, and what it's beneficial for preparing inexpensive applications. Finding the correct initial claim scope. When to use 1126th. How many claims to include? Keep old drafts of claims. How tie components together and to avoid floating components? Why proofreading claims is vital to the examiner, and proofreading specification is vital to client. What formatting is important to examiners and why readability for claims matters. 2. Writing the figures. Illustrate everything you'd consider claiming. Don't explain things you don't need to claim, but keep mind every element you claim needs to be drawn. What tools are available for drawing and which ones are better? When to work with a draftsman. How number you elements in the figures. Figure 1 / Claim 1 approach. Get it all in one figure v figure clarity. Learning how to use other patents to draw complicated figures. 3. Writing the disclosure. How to prepare the specification once you have figures and claims. The disclosure should explain the claims and the figures. Framing improved properties with prior art boundaries. How to describe a "means" in the specification correctly. Value of incorporation by reference and what it provides. What goes in the background and what goes in the summary (and what doesn't.) 4. Proofreading and finalizing: Figures, two parts labeled with one number; one part having two numbers in the figures. Claims, what future products/processes are we trying to ensnare? What design arounds are possible? Do we need more independent claims? How you can be sure you are delivering the work product the client wants.

You might also like