Fall 2012 Advanced Courses Conference Magalog

PATENT RESOURCES GROUP
ADVANCED PATENT L AW COURSES
FOR
ESTABLISHED PATENT PRACTITIONERS
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PRGs Fall Hotel Hyatt Grand Champions Resort, Villas and Spa Indian Wells, CA October 17-23, 2012
Join Us in California Get the Training You Need to Be Prepared for the America Invents Act!
Choose from 10 great advanced patent law courses at our 2012 Annual Fall Conference. See page 3
New one-day course focused solely on the implications for your practice of the America Invents Act! See page 4
Beautiful venue with many on-site activities. A truly amazing room rate!
See page 26 See page 26
All returning October courses updated to reflect the impact of the America Invents Act!
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THE ALMA MATER
OF
40,000 PATENT ATTORNEYS
AND
AGENTS.
Register now at www.patentresources.com
PRGs 2012 Annual Fall Conference Getting You Ready for the AIA
For over 40 years, Patent Resources Group has been the nations leading educator of patent professionals, providing attorneys, agents, engineers, and scientists from around the world with comprehensive courses and publications that set the industry standard for patent education.
WHY SHOULD YOU JOIN US AND HUNDREDS OF YOUR PEERS IN CALIFORNIA IN OCTOBER? BECAUSE PRGS CONFERENCES:
Will prepare you for the America Invents Act all of our returning courses have been updated as needed to reflect the ongoing impacts on you and your practice of the America Invents Act (AIA) of 2011, the most significant development in the patent world in a generation. We're also offering a special one-day course focusing solely on the AIA, at a special discounted price for Loyalty Members or for new attendees taking more than one course at this Conference. This is a course that every practitioner needs to take. Well help you avoid the dangers that the AIA poses to practitioners in all areas of patent law. Different provisions take effect at different times, so it is important to stay current. Provide an amazing value our tuition rates have remained unchanged since 2005 thats seven years with no price increases! And if you come to our programs every year, youre actually paying less for our Advanced Courses due to our Loyalty Program (see below). Go beyond the basics, showing how to apply the law to real-world intellectual property issues and to make calculated legal and business decisions. Give you practical insights that you can apply immediately when you get back to the office. Are an investment in your practice or your company, increasing both your ability to successfully prosecute patent law and the value you bring to your employer. Provide an unparalleled opportunity for networking and exchanging ideas with our faculty and your fellow attendees.
The bottom line for you and your organization is that in todays challenging environment, you cant afford not to invest in your future. And attending PRGs 2012 Annual Fall Advanced Courses Conference is the safest investment you can make. Register soon spaces will fill quickly!
About PRGs Loyalty Program

atent Resources Group's Loyalty Program provides preferential pricing at our Advanced Courses conferences. If you were a paid attendee at any PRG course in 2011 or already in 2012, you are automatically a loyalty member and will be entitled to special pricing when you attend any courses at our August or October 2012 Advanced Courses Conferences! And after being a paid attendee at any PRG course in 2012, youll automatically be eligible for Loyalty Program benefits in 2013. Loyalty Program members save $200 on tuition for each 2- or 3-day Advanced Course and $100 for each 1-day course. However, in August and October 2012, we're offering a special savings of $200 on the 1-day AIA course.
2 www.patentresources.com
Hyatt Grand Champions Resort, Villas and Spa

INDIAN WELLS, CA OCTOBER 17-23, 2012
Three-Day Courses: October 17-19, 2012 (Wed-Fri) Federal Circuit Law (2010-2012)
.................................................. Faculty: Gale Peterson, Jon Hokanson, Jason Fowler, and Sharon Israel
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Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Faculty: Bryan Diner, Anthony Gutowski, and Andrew Holtman
Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

Faculty: Kevin Laurence and Matthew Phillips
Two-Day Course: October 17-18, 2012 (Wed-Thurs) Claim and Specification Drafting for a Single EPO/USPTO Patent Application
Faculty: Bradley Hulbert and David Meldrum
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One-Day Course: October 20, 2012 (Sat) America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions GNEW COURSE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Faculty: Paul Gardner and Edward Manzo
10 courses are available for the 2012 Annual Fall Advanced Courses Conference. Tuition for each three-day course is $2,195. Combined tuition for the Patent Searching Course and Workshop is $2,590. Tuition for the two-day course is $1,995. Tuition for the one-day course is $995. Loyalty Program members save $200 on tuition for all Advanced Courses at this conference!
Three-Day Courses: October 21-23, 2012 (Sun-Tues) Art & Science of Patent Searching Patentability, Validity & Infringement and Optional Patent Searching Workshop . . . . . . . . . . . . . . . . . . . . . . . 6
Faculty: Brian Thurmond and Jonathan Skovholt
Chemical Patent Practice
........................................................... Faculty: Tom Irving, Paul Browning, Jill MacAlpine, and Deborah Herzfeld
Crafting and Drafting Winning Patents

Faculty: Dale Lazar, Paul Ulrich, and John Tsavaris
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12
Designing Around Valid U.S. Patents
.......................................... Faculty: Patrick Burns, John Pinkerton, Patricia Prior, and Robert Turner
14
Drafting Patent License Agreements
............................................. Faculty: D. Patrick O'Reilly, Brian Kacedon, and William Pratt
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Please see page 28 for information about our special one-day August 2012 Conference focusing on the America Invents Act!
Please note that the faculty members listed for each course are subject to change prior to the actual course date.
www.patentresources.com 3
America Invents Act: Monumental Changes, the Consequences and the Unanswered Questions G
NEW
COURSE
Projected State Bar CLE Credit:
Course Faculty
6.0 Hours
Indian Wells, CA October 20, 2012 (Sat) Hyatt Grand Champions Resort, Villas and Spa 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m.
Paul Gardner, PRGs academic director, has over 45 years of experience in examining and prosecuting patent applications, litigating patents, and teaching patent law and Patent Office practice to thousands of attendees for PRG and the UCLA, University of Washington, and Seattle University law schools. Edward Manzo, a partner at Husch Blackwell, is known for his groundbreaking patent work in the courtroom, the classroom and the legal community. He has successfully resolved numerous patent and trademark infringements and misappropriations on behalf of clients in a variety of industries. He is an adjunct professor at a major law school and the author and editor-in-chief of three respected reference books.
Registration deadline: October 3, 2012 Register early! Spaces will fill quickly.
PAUL GARDNER
EDWARD MANZO
HUSCH BLACKWELL SANDERS WELSH & KATZ CHICAGO, IL
G NEW COURSE
Why Should You Take This Course? The America Invents Act (AIA), which was signed into law on September 16, 2011, is the most significant development in the patent world in a generation. If you dont have a thorough understanding of how this legislation will affect your practice, then the risks to you, your firm or company, and your clients are great. This course will provide the understanding that you need to practice effectively under the new law, while also highlighting areas where unanswered questions remain.
PATENT RESOURCES GROUP ALEXANDRIA, VA
Course Description s all of us in the patent profession know, the time has come for us to become intimately familiar with the extensive, complicated, unprecedented changes and additions to Title 35, some of which have already become effective, others of which will become effective on September 16, 2012, and the remainder of which will become effective on March 16, 2013. Not only do patent lawyers and agents have to master the new law, we must during a transition period that will last for many years to come remain acutely aware of the old law and be able to determine whether the old or new law applies under any given set of circumstances.
The content of this course and its accompanying materials were created in an effort to assist patent professionals in acquiring a more or less profound understanding of the new law, its consequences, and the important unanswered issues raised by the changes, many of which will not be definitively resolved until the Federal Circuit interprets the law many years from now.
The course will analyze the statutory changes, consequences and unresolved issues, including the following, most significant subjects: 1. The first inventor to file system, which takes effect on March 16, 2013, and replaces the first to invent system of the current law. The course lecture and materials consider in detail the provisions of completely rewritten Section 102 of Title 35 U.S.C., which expands both geographically and temporally the universe of prior art that may render claims unpatentable for lack of novelty or for obviousness under Section 103, and the applications and patents to which the new law applies.
2. The new Post Grant Review proceeding (so-called by the applicable new statute, Chapter 31, Sections 321-329) before the newly named Patent Trial and Appeal Board, (formerly the Board of Patent Appeals and Interferences). This course considers in depth the requirements, limitations, potential risks and consequences of such a review, which may be initiated by any third party on or after September 16, 2012, who desires to challenge the validity of any claims in a patent issued or reissued during the nine month period preceding initiation of the review, on the ground(s) of failure of the claims(s) to comply with the requirements of one or more of Sections 101,
102, 103 or 112 (with the exception of a best mode violation, discussed below). 3. A new Inter Partes Review proceeding before the Board under new and revised Sections 311-319, effective September 16, 2012, which will replace old inter partes reexamination. The new proceeding will permit a third party to seek cancellation of claims in any patent (no matter when filed or issued) for lack of novelty under Section 102 or obviousness under Section 103, but based only on prior patents or printed publications. 4. A revised inter partes reexamination proceeding, which became effective on September 16, 2011 (and will expire on September 16, 2012 in favor of Inter Partes Review of paragraph 3 above), revised by imposing a more stringent requirement for granting a request for reexamination. The new requirement is that the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail (not merely the prior substantial new question of patentability showing under the previous legal standard). 5. A new derivation proceeding under new Section 291 of the statute, a proceeding before the Board whereby a patent applicant may establish that the inventive entity named in an earlier-filed application published within a year prior to initiation of the proceeding was derived by the earlier filer from the inventive entity initiating the derivation proceeding. 6. Revised Section 301 of the statute which permits any person to submit not only prior art consisting of patents or printed publications believed to have a bearing on the patentability of a particular patents claims, a limitation of the previous version of the statute,
but also statements of the patent owner filed in a federal court or Office proceeding wherein the patent owner expressed a position on the scope of any claim of the particular patent, and also related documentation (e.g., court pleadings and/or evidence). Such written statement(s) and related documentation may be considered by the Office in any proceeding reviewing the patent, but only with respect to interpretation of the claim(s) involved. 7. New Section 257, which permits the owner of a patent to request supplemental examination of the patent by the Office to consider, reconsider, or correct information believed by the applicant to be relevant. Applying the substantial new question of patentability standard, the Office will decide whether to order reexamination based on the information submitted in support of the patent owners request. If reexamination is ordered, the Office will consider all of the information submitted, not just the patents, printed publications and newly-added written statements to which ex parte reexamination requests are otherwise limited under Chapter 30 of the statute, Sections 301-307. 8. A Transitional [8 years, beginning September 16, 2012] Program for Covered Business Method Patents, a post grant review proceeding before the Board (mentioned in paragraph 2 above), for challenging the validity of any covered business method patent for which the petitioner initiating the proceeding (or his/her privy) had been charged with infringement. (Covered patents are those claiming a method or corresponding apparatus for performing data processing...operations used in the practice...of a financial product or service other than in technological inventions. Sec. 18(d)(1) of Public Law 112-29.)
9. New best mode law, curiously retaining the best mode disclosure requirement in Section 112, Paragraph 1, but eliminating its violation as the basis for an invalidity or unenforceability (inequitable conduct) defense. Newly rewritten Section 282(a)(3)(A) of Title 35. 10. Prioritized Examination, a procedure for obtaining expedited examination of applications, subject to applicants compliance with certain stringent prerequisites and payment of significant fees, aimed at final disposition of the application with 12 months of the Offices granting of prioritized status. 11. Prior user rights pursuant to rewritten Section 273, under which a good faith, commercial use of a claimed invention more than one year before the effective filing date of a claimed invention (or the date the claimed invention was first disclosed under a limited one-year grace period provided in Section 102(b)) is a defense to infringement. 12. Certain other changes in the AIA of less substantive concern and/or less frequently encountered, will also be considered, albeit to a lesser extent, such as Added inventors oath or declaration provisions under rewritten Section 115 of Title 35, Unpatentability of tax strategies, Patent Office fees, including new micro entity fees, Preclusion from evidence of failure of an accused infringer to obtain advice of counsel, Defense to infringement based on prior commercial use, and Elimination of qui tam actions for false marking. G
njoy breathtaking views of the natural beauty of the Resort's surroundings.
Art and Science of Patent Searching Patentability, Validity & Infringement

... And Optional Patent Searching Workshop
Course Faculty The faculty consists of patent searching and analysis leaders at Landon IP who have
15.0 Hours
Indian Wells, CA October 21-23, 2012 (Sun-Tues) Hyatt Grand Champions Resort, Villas and Spa 8:15 a.m. - 11:30 a.m. and 1:30 pm. - 4:45 p.m. (Sun-Mon) 8:15 a.m. - 11:30 a.m. (Tues) Optional Workshop 1:30 p.m. - 4:45 p.m. (Tues)
expert search experience as attorneys, patent search instructors, and examiners with the U.S. Patent and Trademark Office (USPTO).
BRIAN THURMOND
JONATHAN SKOVHOLT
LANDON IP, INC. ALEXANDRIA, VIRGINIA
Course Description
Why Should You Take This Course? The Patent Searching course presents a systematic process for performing prior art searches with greater efficiency and precision. It is designed to benefit a broad audience, including novice searchers, seasoned patent practitioners, and search professionals. The course also provides unbiased, detailed information concerning the latest databases and tools of the trade. Expert tips from search professionals are provided to enable high-level patent research through proper scoping, structuring, and performance of the search. Patent practitioners will recognize that a robust understanding of the prior art is a vital part of the patent process, particularly in view of accelerated examination demands and the America Invents Act.
It provides direction for determining when a search is needed and what types and sources of information should be searched in the process. Patent searching is both an art and a science. Consequently, search capability improves with practice. But optimum practice requires a solid foundation for those who seek to conduct searches accurately and efficiently. The course teaches when, how, where and why to conduct a search and is appropriate for those who will conduct the search or commission it. Designed for patent attorneys and agents, inventors, paralegals and research managers, the course and its materials will be understood by anyone from the inexperienced to advanced practitioners. Unlike workshops that are taught by competing database providers, this global course is not tied to a particular search engine, a database product or a patent information service. Instead, the instructors teach skills that are applicable across databases, both proprietary and public, and without bias toward the features of a particular search engine. Unique among its many features, the course provides a comparison of the major patent search engines and teaches the strengths, weaknesses and benefits of the database providers who provide them.
his course comprehensively teaches how to conduct a professional patent search.
Comments from previous attendees: Well structured course. Good pace. Very useful tips and information. High relevance to my specific organization. I'm entirely new to this field. It was general enough, but detailed enough, for a beginner like myself. Highly competent instructors. The curriculum and text were designed and written by twelve practitioners: eight experienced patent information specialists and four former examiners with expertise in both English and foreign language searching. The
curriculum reflects the combined expertise of Landon IP, which is one of only two companies selected by the USPTO to conduct patent searches on its behalf with a view to reducing USPTO examiners' towering examination backlog. Upon completion of the course, the attendee will have learned: How to approach a search in a systematic, methodical and exhaustive way. How to properly scope the search before even beginning.
How to carefully search by classification, text query progression, and citations, knowing the benefits and pitfalls of each. Both the major differences and subtle nuances in conducting a patentability, validity or infringement patent search. Issues unique to searching within specific technical disciplines. Approaches to searching non-Englishlanguage patents and published applications. Approaches literature. to searching non-patent
Course materials The text for the course is Art & Science of Patent Searching Patentability, Validity & Infringement, edited by Matthew Rodgers, Long Nguyen and David Hunt. The thoroughness of the text will minimize the need for note-taking at the program.
Optional Patent Searching Workshop

A patent search engine user account is needed for the Workshop. Please contact PRG if you need assistance in obtaining one. This Workshop is an optional add-on to the Art and Science of Patent Searching course. It gives attendees the opportunity to practice hands-on patent searching alongside the course instructors. The faculty will work with the attendees to answer questions and provide guidance as they execute their searches in real time. The Workshop is structured to test each attendees retention of the concepts covered in the course as they put their training to use in several sample search projects. Attendees will be provided with multiple sample disclosures, encompassing a wide variety of technologies, on which they will base their search. The informal, lecture-free setting will allow each attendee to work independently, but in close proximity to an instructor. Attendees must bring their own laptop computers and will be provided with wireless Internet access in the classroom. Attendees are also asked to bring
their own search engine user accounts so that they will be able to practice using familiar search tools. The instructors will be able to provide assistance with any of the major patent search engines. The attendees will be guided through scoping the search, performing the search and analyzing their results. Answer keys will be provided at the end of the Workshop so that participants may gauge their progress and have a reference to use for additional practice following the class. Requirements and Prerequisites: Completion of the immediately preceding 2012 Art and Science of Patent Searching course Important: Wireless-enabled laptop computer (Internet Explorer or Firefox web browser, and Microsoft Office package recommended) Important: Patent search engine user account (in an attempt to focus on course concepts and high-level searching techniques, publicly available search engines cannot be solely relied upon for the lab portion of this course) Important: Unrestricted use of third-party wireless connection (please verify with your IT department that your security settings will allow access to the wireless hub necessary for the course). G
Approaches to reporting search results. Differences between the major patent search engines and important considerations in selecting an appropriate search tool. Ways to get high-level information from patent search results. The basics of several peripheral topics including the use of the USPTO search templates, searching for accelerated examination, and searching using industry standards.
yatt Grand Champions elegant accommodations begin in the lobby, the perfect place to relax and unwind.

Course Faculty
16.5 Hours
(Including 2.0 Hours Legal Ethics)
The faculty has decades of collective experience across the complete spectrum of chemical practice.
Indian Wells, CA October 21-23, 2012 (Sun-Tues) Hyatt Grand Champions Resort, Villas and Spa 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:15 p.m. (Sun-Tues)
TOM IRVING
PAUL BROWNING
JILL MACALPINE
DEBORAH HERZFELD
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC
Course Description his up-to-the-minute course teaches the chemical patent practitioner how to use fundamentally sound principles to prepare and prosecute a United States chemical patent application in a conservative way and in view of all of the opportunities and pitfalls afforded by the AIA,to enhance such possibilities as:
obtaining broad claim construction for literal infringement purposes, particularly by avoiding "vile" language (i.e., lightning rods for noninfringement and 112, para. 2 invalidity) that is best described as patent profanity; Why Should You Take This Course? Are you well-versed on how chemical claims are constructed and construed? Well enough to avoid an overly narrow, often disastrous claim construction leading to a royalty-free transfer of patented technology to your competitor? Well enough not to trip up on obviousness over KSR? If youd like to answer these questions with a resounding yes then you should attend our highly-acclaimed, comprehensive Chemical Patent Practice course. Dont fail your clients or yourself in these tough economic times learn from the best. utilizing the doctrine of equivalents to the extent that the doctrine still exists; surviving Festo; destroying, not rebutting, a defective prima facie case of obviousness in our current postKSR world, including illustrations from several real U.S. patents prosecuted by a faculty member; obtaining the broadest possible claims by avoiding too many and unduly narrow limitations; obtaining claims that will be directly and literally infringed by competitors rather than by customers; proving literal infringement of claims in litigation; obtaining claims infringed by downstream infringers; preparing and prosecuting the application to avoid inequitable conduct in view of the Federal Circuit's en banc decision in Therasense and progeny thereof, and the impact of the AIA supplemental examination procedure that went into effect September 16, 2012; and understanding the implications of the various provisions and effective dates of the America Invents Act (AIA), particularly as they relate to filing strategies in and around the rapidlyapproaching March 16, 2013 date when the first inventor to file provisions take effect.
For example, the rising tension within the Federal Circuit panels on the role of the specification in claim construction and the increasing pressure to revisit the Cybor rule of de novo review of claim construction on appeal will bring important developments for practitioners in the very near future on what to expect for claim construction. For the practitioner, the take-home message remains
to prosecute as if your life depended on literal infringement and lay the groundwork in the specification (the single best guide to the meaning of a claim term) for a broad claim construction. This course, presented by an experienced faculty, each with a significant depth of experience, suggests many practical approaches with those objectives in mind. We discuss how to establish patentability
and validity under 103 in the post-KSR world, where knowledge and direction equate power. Case studies, involving real U.S. patents, will provide a framework for creative thinking on the law of prima facie obviousness. We will look closely at the guidelines for best mode disclosure from a substantive and ethical point of view, particularly in view of changes made in the AIA. In addition, we consider the Federal Circuit inequitable conduct decisions in the context of the en banc Therasense decision, including its progeny, many of which will be reviewed for the lessons they provide to both in-house and private practice lawyers. In fact, the inequitable conduct and best mode discussions provide the two hours of ethics that is otherwise sometimes hard to find, particularly on substantive topics related to your practice. The ethics discussion should be from 8:30 to 10:30 a.m. on the second day (as currently estimated). The last day will include a discussion of a hypothetical chemical patent problem that synthesizes and reinforces the teachings of the class. The enactment of the AIA does not wipe the patent law slate clean. Because of the way the various effective date provisions activate and apply, the old law will be relevant to practitioners until at least March 16, 2034! Thats right practitioners will have to be experts in both old and new laws for at least
another 22 years! The Chemical Patent Practice faculty has lectured on the new law extensively and has studied it intensively in conjunction with people who were instrumental in the drafting of the legislation. The faculty will bring all of that background to their presentations to you. And do not be misled into thinking that this course is applicable only to patent prosecutors. The principles taught will greatly help those involved with prelitigations, litigations, Orange Book listings, due diligences and analysis of third-party patents for validity, infringement, and enforceability issues. Comments from previous attendees: This is one of the best courses that I have ever taken. All of the instructors are excellent and provide very helpful practical tips regarding chemical patent practice. The material provided is excellent and a very good reference guide. Mark Cohen Scully, Scott, Murphy & Presser PC October 2009 attendee Good overview and reminders of good practice points. Great consolidation of information and tips based on recent case law. Very current. Heather Gorman Thomas, Kayden, Horstemeyer & Risley, LLP April 2010 attendee
Course Materials The definitive treatise, Chemical Patent Law, written and continually updated by the Finnegan, Henderson, Farabow, Garrett & Dunner faculty, with the invaluable assistance of editor Stacy D. Lewis, will be provided to attendees at the course. This treatise covers virtually every situation that can arise in the preparation and prosecution of a chemical patent application. It will remain on your desk and in continual use long after the course. The treatise underwent a complete overhaul in the aftermath of the enactment of the AIA to provide completely updated materials to the course attendees. Although the treatise is of great value, the faculty members have found that the best vehicle for teaching is the use of slides, which will be provided in book form to attendees on the first day of class. The slides book will contain ample room for note-taking and cross-referencing and, as such, will be a valuable addition to your daily kit of chemical patent practice tools. In fact, you can bring it if you want, but you wont need the course book during the lectures. G
ake advantage of the Resort's 24-hour state-of-the-art fitness center when you are not in class.
Claim and Specification Drafting for a Single EPO/USPTO Patent Application

Course Faculty This course is taught by one U.S. and one European patent attorney with experience in
12 Hours
Indian Wells, CA October 17-18, 2012 (Wed-Thurs) Hyatt Grand Champions Resort, Villas and Spa 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m. (Wed-Thurs)
both patent prosecution and litigation for multinational clients.
BRADLEY HULBERT
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP CHICAGO, IL
DAVID MELDRUM
D YOUNG & CO LONDON
Course Description
Brought to you in partnership with:
hile the EPO and USPTO have similar requirements for patent applications, the same application can have dramatically different results in Europe and the U.S. An application originating in the U.S. frequently encounters substantial difficulties before the EPO. For example, the U.S. applicant often finds itself unable to amend claims in a manner clearly available during U.S. prosecution because of European "Priority Rules." Recurrently, claims issued by the EPO to a U.S. applicant are unnecessarily narrow by European standards.
This course will show you how to draft and prosecute one patent application which will comply with the differing requirements of both the EPO and the USPTO. There will be practical worked examples, illustrations, demonstrations of best practice and plenty of discussion, ensuring that you will go home with a realistic and workable solution to a perennial problem.
Why Should You Take This Course? This course is ideal for anyone who files patents before both the EPO and the USPTO. It provides a practical approach to developing a single patent application that complies with the requirements of both of these patent authorities.
The need for high-quality application drafting, acceptable to both the USPTO and European Patent Office, has never been greater. This course will give attendees a comprehensive overview of the principles underlying the preparation and prosecution of patent applications in both the U.S. and Europe. The speakers will: Compare and contrast the often very different approaches of the USPTO and European Patent Office Show the similarities and discrepancies in language that can invalidate or block applications in each country, and propose solutions Offer the best practices for preparing an application that is well suited for filing in both the US and Europe
Illustrate the legal basis for such practices. Discuss the implications of the America Invents Act on application drafting Practical application: During the course attendees will be divided into groups to correct, modify and prepare existing sample claims. This will then be followed by a plenary session during which attendees and speakers will discuss the worked examples to produce an optimal specification acceptable to both the EPO and USPTO. The seminar will also include ongoing opportunities for participants to ask questions and discuss individual concerns. For course syllabus, go to our website at www.patentresources.com G
he attentive staff at the Agua Serena Spa are ready to provide you with a variety of rejuvenating services, including massage therapy, facial skin care, water therapy, and spa body treatments.
Crafting & Drafting Winning Patents

Course Faculty
15.0 Hours
(Including 1.0 Hour Legal Ethics)
Collectively, over 70 years of experience litigating, prosecuting and teaching about patents.
Indian Wells, CA October 21-23, 2012 (Sun-Tues) Hyatt Grand Champions Resort, Villas and Spa 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m. (Sun-Mon) 8:15 a.m. 11:30 a.m. (Tues)
DALE LAZAR
DLA PIPER US LLP RESTON, VA
PAUL ULRICH
DINSMORE & SHOHL LLP, DAYTON, OH
JOHN TSAVARIS
KENYON & KENYON NEW YORK, NY
Course Description his Crafting & Drafting course marches to a special drummer and focuses on the end result producing a winning patent that will be held literally infringed and not invalid under 112, para. 1, despite the time pressure created by moving to a first-inventor-to-file system under the America Invents Act (AIA).
Why Should You Take This Course? Learn the areas of chaos in Federal Circuit jurisprudence of primary concern to practitioners who prepare and prosecute patents. The course will focus on a series of cases where the patent owner lost, not because of what the litigators did, but because of how the patent practitioner drafted and prosecuted the application. Compounding the problem is the time pressure created by moving to a firstinventor-to-file system under the recently enacted America Invents Act (AIA) and the anticipated increase in the filings of provisional applications with their many traps for the unwary. The course will teach you how to write provisional applications and draft and prosecute nonprovisional patent applications to avoid these pitfalls.
The Conundrum. Chaos now reigns supreme in Federal Circuit case law (and the judiciary of the U.S. district courts have begun to say so openly). For example, the importation of claim limitations from the specification into the claims albeit under the rubric of claim interpretation is now rampant, rendering many patents virtually worthless. A case in point is C.R. Bard, Inc. v. United States Surgical Corp., where the court imported the limitation pleated into a broad claim reciting a surgical mesh plug used for hernia repair, relying heavily in doing so on the Summary of the Invention that described a plug having pleats. The court repeatedly referenced the Summary of the Invention throughout the opinion, notwithstanding the fact that 23 narrow claims of the 25 in the patent did recite a pleated plug, without even mentioning, let alone reconciling, the immutable doctrine of claim differentiation that should have sustained the broad claims. Claim interpretation is only one chaos region. There are others where the Federal Circuit case law is equally inconsistent, including the law concerning the written description requirement, means-plusfunction clauses, the doctrine of equivalents, and prosecution history estoppel. This creates an immense dilemma for conscientious patent practitioners trying to write and prosecute patent applications that will provide their clients with the patent protection they deserve. Which cases should be relied on, and which should be ignored?
Comments from previous attendees: Practical advice for drafting enforceable patent claims, sprinkled with supporting legal authority. Spanning the gap between current Federal Circuit law and actual, practical tips on how to incorporate the latest law into successful prosecution practices. Good coverage of current law and potential pitfalls associated with certain practices (I'm planning to make changes to my practice with regard to various pitfalls you have pointed out).
Answer to the Conundrum. There is a sound basis for dealing with the dilemma generated by the Federal Circuit! A practical ex parte practice path is now in being that navigates through the chaos. Its road sign reads LP-CD (Low Profile, Common Denominator Practice). LP-CD, despite the chaos it penetrates and traverses, is charted clearly and boldly in this PRG course. Crafting & Drafting Winning Patents was designed and created by PRGs Professors Paul Gardner and Irving Kayton and enriched by the PRG course faculty.
This course distills everything from the law (and dicta) of the Federal Circuit and its predecessor courts that has a material bearing now, today, and in the foreseeable future, on how we must successfully: 1. Prepare for drafting the application; 2. Design what must be included in, and excluded from, the provisional application and the nonprovisional application specification and drawings and, very importantly, in what form and format it should be included; 3. Engage in claim drafting strategy designed to result in literal infringement, recognizing that this strategy must be taken into account as a principal factor in the earlier design of the specification; 4. Develop a protocol and a philosophy for prosecuting the application that advance and do not defeat the efforts in (1) through (3); and 5. Balance the accomplishments of (1) through (4) against, first, increased costs of crafting and drafting that sometimes accrue and, second, their effect on the
length of the patent term that will result, and third, the time pressure created by moving to a first-inventor-to-file system under the AIA. Crafting & Drafting will almost certainly effect a change in your patent law life, because the Federal Circuit has effectively (albeit unwittingly) dictated that it be so. It is noteworthy that many hundreds of patents have already issued using the Crafting & Drafting techniques set forth in this course (several of which will be reviewed), with beneficial effect in license and litigation negotiations. Legal ethics issues including the recent Therasense decision and its profound changes to the law of inequitable conduct and duty of disclosure will be covered from 9:15-10:15 a.m. on the last day of the course, as currently estimated.
Who Should Take This Course? This course is for patent practitioners with a minimum of two years of practice, and preferably more. It is sufficiently sophisticated for even the most experienced. The faculty knows this to be true because the problems and solutions about which they conferred and debated in bringing this course to fruition plumbed the depths of their combined patent law knowledge, experience and ongoing research and scholarship. Beginning patent practitioners should look forward to our four-day workshop designed specifically for them, The Winning Patents Workshop. For details visit our website at www.patentresources.com. Course Materials A comprehensive, one-volume course text, entitled Crafting & Drafting Winning Patents, and a bound set of lecture slides, are definitive on the subject and will be given to registrants at the course. The Textbook and slides are constantly updated and revised to include recent decisions and changes in the law including the applicable provisions of the AIA. G
ask in the beautiful mountain vistas while playing a round of golf on one of the Resort's two popular 18-hole courses.
Designing Around Valid U.S. Patents

15.0 Hours
Course Faculty PRG has offered Designing Around Valid U.S. Patents for over 15 years, and it remains one of our most popular courses.
PATRICK BURNS
GREER, BURNS & CRAIN, LTD. CHICAGO, ILLINOIS
JOHN PINKERTON
ROSE WALKER DALLAS, TEXAS
PATRICIA PRIOR
GREER BURNS & CRAIN LTD. CHICAGO, IL
ROBERT TURNER
JONES DAY DALLAS, TEXAS
Course Description n Markman and Cybor, the Federal Circuit required district courts to construe claims as a matter of law and decided to review claim construction de novo. The object was to make claim construction predictable, so that claims would better perform their public notice function. The result has been an unmitigated disaster, often (but not always) reading limitations into the claims that the examiner did not require to establish patentability over the art of record. In fact, the court has often overridden the examination process, undermining the public notice function of claims ab initio. This course will explore the current condition of claim construction in detail and explain how competitors can use it to their advantage, even when the claims on their face are literally infringed.
Why Should You Take This Course? The Designing Around course distills the patent infringement analysis into comprehensive yet concise step-bystep checklists that can be used by attorneys at all experience levels to assist their clients to develop competitive, noninfringing products.
Comments from previous attendees: Practical explanation of case law to apply to patent drafting, infringement analysis and opinion writing. The substance was excellent. Presentations gave good overviews and the course books give encyclopedic detail for topics of interest. Well organized, very thorough, presenters all know their stuff. Four cookbooks covering (1) literal infringement, (2) infringement under the doctrine of equivalents, (3) infringement of means plus function claim elements, and (4) prosecution history estoppel, are provided. Using and following these cookbooks, which distill opinions by the Federal Circuit and the Supreme Court in cases from Pennwalt to Festo IX, any patent practitioner can counsel his or her client on how to design around the patented invention with almost certain impunity a design that appropriates the patented invention and that, prior to Pennwalt and its progeny, would have been held an infringement rather than the socially desirable activity of designing around.
This course will show practitioners representing potential infringers how to counsel competitive product design under the guidance of Federal Circuit and Supreme Court cases, which will almost always be viewed as effective designing around. How to conduct litigation to achieve a happy ending for your infringement-accused client will be set forth in elegant simplicity. Actual Demonstrations To ensure no confusion on anyones part in this exercise, the faculty and students will go through several claim construction exercises and compare their conclusions with the Federal Circuits claim construction in actual cases. A mock design around exercise will also be presented. The demonstration considers client, marketing and engineering perspectives, in addition to legal analysis. To prepare for the exercises and demonstration, the course faculty will illustrate the accused structures relative to the claims in the landmark, no-infringementby-claim construction cases of C.R. Bard v. U.S.
Surgical Corp. and Nystrom, the noinfringement-by-equivalents cases of Slimfold, Laitram and London, and the super landmark, no-equivalents-at-all after-prosecution-historyestoppel case of Festo IX. These and other cases are presented in literal, graphic clarity.
How to Draft Infringement and Noninfringement Opinions The substance presented in the course teaches what is important in opinions. But the faculty also explains the form and format such opinions should take to have the best posture in litigation for both the plaintiff and defendant. The legal ethical considerations involved in infringement opinions relative to willful infringement considerations are presented on the second day from 2:00 to 4:00 p.m., as currently estimated.
Course Materials The two-volume text for Designing Around Valid U.S. Patents is authored by the distinguished course faculty, each of whom has extensive successful litigation, prosecution and counseling experience. Nothing like these unique books exists anywhere else. G
it by the fountain and relax as you watch the sun set behind the palm trees at the end of the day.
Drafting Patent License Agreements

Course Faculty The faculty teaches by sharing decades of combined experience in licensing.
15.0 Hours
D. PATRICK O'REILLEY
D. BRIAN KACEDON
WILLIAM PRATT
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC
Course Description
his course and its text provide concrete drafting and negotiating advice with precise references to existing law.
Why Should You Take This Course? Licensing is a key strategy by which companies realize significant value from their patents and technology. The ability to draft, negotiate and interpret license agreements is a core skill for IP attorneys and other professionals who deal with licenses. This course provides a comprehensive overview of key licensing concepts, the drafting of key clauses in a license agreement, and the impact of related topics such as competition law, export control law and the Bayh-Dole Act. It is taught by experienced license professionals with an emphasis on practical considerations and provides valuable insights and discussion for both novices and more advanced practitioners.
The course lays the groundwork for a clause-by-clause examination of all significant elements of the patent licensing agreement. The practical questions always focused on are how and whether each element is sufficient to serve the business needs of the parties while remaining legally viable. The main components of typical licensing agreements, from the opening part through the execution and authentication provisions, are examined in detail. Practical, hypothetical illustrative examples are used, often in workshop form, with carefully crafted problem handouts distributed to the attendees during the course. Throughout the course, the faculty members emphasize achieving legally satisfactory drafting results by recognizing the logical principles that underlie the job to be done. Sample forms are used to explain the practical considerations upon which they are based. Law and precedent are presented in terms that make clear the legal reasoning behind recommended drafting approaches.
Comments from previous attendees: I have been drafting license agreements for the Federal government for 6 years, and this course helped tie together everything I've learned in this time. Suzanne Seavello Shope Centers for Disease Control & Prevention April 2010 attendee The information is very practical and relevant to the 'real world' problems encountered in drafting and reviewing agreements. Glenn Smith Bausch & Lomb October 2008 attendee
This is a course for the craftsman. Both the course and the text provide a solid basis for responding to virtually every license drafting problem that may arise. Even for the highly experienced licensing lawyer, new insights may be provided; at the very least, the course will be a rich, comprehensive refresher. For the less experienced licensing lawyer, it will open vistas, both with respect to hidden problems and to mechanisms for dealing with them. Legal ethics in license negotiations will be presented from 3:15 to 4:15 p.m. on Day 2 and in misuse issues from 10:00 to 11:00 a.m. on Day 3, as currently estimated.
Course Materials The text for the course is the Sixth Edition of the classic, Drafting Patent License Agreements (BNA), by Brian G. Brunsvold, D. Patrick OReilley and D. Brian Kacedon. The thoroughness of the text and accompanying slides will minimize the need for note-taking at
the program. Moreover, this Sixth Edition includes a computer disk, which has a set of form paragraphs that can be incorporated, with careful editing, into a license agreement to be prepared by the course attendee. The hardcopy edition of the course text will be given to each attendee at the program. The
volume containing the printed slides that will be used throughout the lectures will also be provided at the course; this volume will include extensive license drafting workshop materials and Justice Department licensing guidelines. G
ake a seat in the beautiful lobby to chat with your fellow PRG attendees, check your email using high-speed wireless, or read the newspaper.
Federal Circuit Law (2010-2012)

Course Faculty
INCLUDING COMMENTARY on the America Invents Act
15.0 Hours
The one-of-a-kind faculty, all past Law Clerks and Technical Advisors spanning the courts history, provide matchless inside perspective and candid, unequaled insight to Federal Circuit law past, present and future. This now becomes particularly unique given the America Invents Act of 2011 (AIA), and the lecturers commentary on whether and how the AIA may affect Federal Circuit law.
Indian Wells, CA October 17-19, 2012 (Wed-Fri) Hyatt Grand Champions Resort, Villas and Spa 8:15 a.m. 11:30 a.m. and 1:30 p.m. 4:45 p.m. (Wed-Thurs) 8:15 a.m. 11:30 a.m. (Fri)
GALE PETERSON
COX SMITH SAN ANTONIO, TX (FORMER TECHNICAL ADVISOR TO THE LATE CHIEF JUDGE MARKEY)
SHARON ISRAEL
MAYER BROWN LLP HOUSTON, TX (FORMER LAW CLERK TO CIRCUIT JUDGE LOURIE)
JON HOKANSON
LEWIS BRISBOIS BISGAARD & SMITH LLP, LOS ANGELES, CA (FORMER TECHNICAL ADVISOR TO THE LATE CIRCUIT JUDGE MILLER)
JASON FOWLER
COVINGTON & BURLING LLP WASHINGTON, DC (FORMER LAW CLERK TO CIRCUIT JUDGE LINN)
America Invents Act of 2011 (AIA) Why Should You Take This Course? Each week the Federal Circuit publishes opinions that materially clarify and sometimes alter existing practice. One cannot competently practice as a patent attorney today, in prosecution, litigation, counseling or licensing without an understanding of the Federal Circuits most recent opinions. The distinguished faculty of Federal Circuit Law (2010-2012) will expertly guide you through two years of relevant and up-to-the-minute cases in an interactive lecture format that encourages active attendee participation. Moreover, lecturers will discuss new cases in the context of prior cases (many outside the two-year time span), thus giving you not only current law, but also a perspective on how the law has changed. The AIA was signed into law by President Obama on September 16, 2011, and represents, by many interpretations, the most significant change to the U.S. patent system since 1952. The Act, among other things, initiates a first-inventor-to-file system (FITF), and includes provisions on post grant review (PGR), inter-partes review (IPR), preissuance and comment, supplemental examination, a revised grace period and redefinition of prior art to include subject matter that is otherwise available to the public, expands the defense of prior commercial use, retains best mode as a disclosure requirement, but removes best mode as a ground of invalidity, and significantly alters the false marking statute. But those are just the highlights. Apart from the sweeping changes, including a rewrite of Section 102, the Act has sections that will raise questions for years to come until resolved through the courts. Some portions of the Act became effective immediately other portions variously become effective 1 year or 18 months after signing. In general, the FITF portions become effective for applications filed on or after March 16, 2013, and for years to come, practitioners will have to practice under parallel systems the old law and the new law. The lecturers will explain, as appropriate, how the results in particular cases may be affected by the AIA.
Course Description f you have not been reading and closely analyzing all of the Federal Circuits patent opinions during the past years, you may unwittingly be flying blind in some areas of your practice. In virtually every area of patent practice, surprising and often startling opinions are emanating from the court. Often those opinions are at variance with established precedent, but without any admission or acknowledgement of the variance by the panel majorities despite pointed, compelling demonstrations thereof in dissents and concurrences. From Ariad Pharmaceuticals, Inc. v. Eli Lilly Co. (2010) to Media Technologies Licensing, LLC v. Upper Deck Co. (2010) and beyond, this course provides deep insight into the Federal Circuits opinions over the past two years and tells you what you need to know to continue to be an effective practitioner. As Chief Judge Rader opines, by understatement, these cases must leave practitioners in a quandary. Indeed! Clearly ex parte practice is not what it once was.
Perhaps indicative of the courts split on claim construction, for example, is the opinion in Retractable Technologies, Inc. v. Becton, Dickinson & Co. (2011). The panel majority, led by Judge Lourie, concluded that body in the claims required a one-piece body, while the dissent by Chief Judge Rader urged that the claim language and claim differentiation clearly required the conclusion that body was not limited to a one-piece body. A divided court declined to rehear this case en banc, yet the split in the court still percolates. The court also continually issues panel opinions that do not necessarily overturn prior panel opinions, but significantly limit the same. An example is In re Katz Interactive Call Processing Patent Litigation (2011), that limits WMS Gaming, Inc. v. International Game Technology (1999) and Aristocrat Technologies Australia Pty Ltd v. International Game Technology (2008), in the area of means-plusfunction limitations. One of the areas that harbors the most unsettling and startling developments is the courts linking of claim construction to the written description requirement, an area that, according to Chief Judge Rader, has become opaque to the point of obscuring other areas of this courts law. This linking has resulted in a number of seemingly inconsistent panel
opinions, especially in instances where the patent-in-suit has facially broad claims, but a In Ariad narrowly drafted specification. Pharmaceuticals, Inc. v. Eli Lilly Co., the court en banc confirmed that there is a separate written description requirement that applies outside of the priority contextthat separate and apart from whether the specification enables the claims, the specification must contain a written description of the invention. The court remains splintered on this issue, however, and several judges believe that the invalidation of a claim on the basis that it is broader than the invention described in the specification is inconsistent with the Federal Circuits rule of claim construction that embodiments from the specification should not be imported as limitations to the claims. Also, in Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp. (2011), the court, in an opinion by District Judge Whyte, N.D. Calif., sitting by designation, and over a dissent by Circuit Judge Dyk, reversed a district courts conclusion that the specification lacked sufficient written description support given the breadth of the claims, noting that original claims, in some instances, may provide written description support, despite statements to the contrary in Ariad. Nevertheless, Judge Moore, writing for the court in Boston Scientific Corp. v. Johnson & Johnson (2011),
reiterated the rule from Regents of the Univ. of Cal. v. Eli Lilly & Co. (1997) that [a] written description of an invention involving a chemical genus, like a description of a chemical species, requires a precise definition, such as by structure, formula, [or] chemical name, of the claimed subject matter sufficient to distinguish it from other materials. Another hot topic is joint infringement. The Federal Circuit has taken Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp. for en banc review, but regardless of the outcome, joint infringement may depend on whether a claim may avoid a conclusion that multiple entities are required to infringe if the claim simply defines the environment in which infringement must occur per Advanced Software Design Corp. v. Fiserv, Inc. (2011). The Federal Circuit continues to surprise the bar in other areas as well with its statutory interpretations. For example, in August Technology Corp. v. Camtek, Ltd. (2011), the court rejected a jury instruction based on the AIPLAs model jury instructions, and concluded that a device may be the subject of an offer for sale prior to Its being ready for patenting, but also concluding that there is no actual offer for sale until after conception. An additional ... continued on next page.
rom your room, enjoy views of the pools and golf course, in the midst of nature's grandeur.
example - although the fundamental grounds for determining novelty and loss of right to patent under 35 U.S.C. 102 have been part of the statute since 1793, and most certainly since 1836 and 1870, the Federal Circuit continues to decide some cases on the narrow ground of accepting or rebutting partys arguments however bizarre rather than the underpinnings of the statutes. In Solvay S.A. v. Honeywell International, Inc. (2010), for example, the court concludes, on at best shallow reasoning in response to misguided party arguments, and seemingly uncritical reliance on an ambiguous statutory amendment, that when 102(g)(2) is construed as a prior art subsection, a prior actual reduction to practice in this country before the patentees earliest date of invention does not qualify as prior art if the reduction to practice is by one who does not qualify as an inventor who conceived the invention. Never before has novelty turned on showing inventorship. This is one example, though, of where the AIA may affect the result. But the pendulum swings. After the Supreme Courts opinion in KSR International Co. v. Teleflex, Inc. (2007), seemingly rejecting at least a rigid showing of a motivation to combine reference teachings, the validity of many patents drawn to mechanical and many electrical inventions under 103 became doubtful. However, the pendulum appears to be swinging back Judge (now Chief Judge) Raders dissent in Media Technologies Licensing, LLC v. Upper Deck Co. (2010) that [l]urking just beneath the surface of this courts blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts, seems to have sparked (albeit not in that case) a renewed view of the requirement for motivation. Nevertheless, some panels of the Federal Circuit now permit reliance on common sense to find patents invalid under 103, and more egregiously, despite the lack of any reference supporting the same. When this will end is anybodys guess. But Chief Judge Raders opinion in Unigene Laboratories, Inc. v. Apotex, Inc. (2011), suggests that the court will increasingly insist on some showing of motivation, thus perhaps swinging the pendulum back pre-KSR. This course examines the Federal Circuits postKSR cases in detail. Will the many areas of inequitable conduct currently in doubt be resolved by the Federal Circuits en banc view in Therasense? And the courts adoption of a but-for-plus standard of materiality? Doubtful but maybe. And what about the flood of cases held back pending the Federal Circuits decision in Therasense? The course will
examine Therasense in detail, with suggestions on complaince with Rule 56(a). The AIA also offers supplemental examination which may cure alleged inequitable conduct. Claims of legal malpractice are increasing at an alarming rate. The Federal Circuit has provided some solace in Immunocept, LLC v. Fulbright & Jaworski LLP (2007), holding that it has jurisdiction of legal malpractice claims under certain circumstances. In addition, though, what conduct is subject to sanctions? The Federal Circuit continues to issue opinions that affect the basic practice of patent law. The Supreme Court has also been active in developing the patent law, often rebuffing the Federal Circuit for failing to adhere to Supreme Court precedent. For example, in In re Bilski, the Federal Circuit attempted to clarify the test for determining whether a claim recites patentable subject matter under 101 by holding that its machine or transformation test is the sole and exclusive inquiry. The Supreme Court promptly rejected the Federal Circuits machine or transformation test as the sole test for patentable subject matter, but declined to articulate a clear test to replace the Federal Circuits test thus leaving a vacuum for the Federal Circuit to fill. The course will cover post-Bilski developments, and will sort through the uncertainty left in the wake of Bilski. But each post-Bilski case seems to raise additional questions. For example, a panel in CyberSource Corp. v. Retail Decisions, Inc. (2011), questioned the validity of Beauregard-type claims, but as a panel opinion could not overturn Beauregard. Does that signal the demise of such claims? In other areas, the Federal Circuit has quashed long-standing abuses. In Uniloc USA, Inc. v. Microsoft Corp. (2011), for example, the Federal Circuit held, in the area of damages, that as a matter of Federal Circuit law that the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. The 25% rule, used for more than a decade, thus disappears. In yet other areas, the Federal Circuit has further explained and thus limited prior even en banc opinions, such as in Spectralytics, Inc. v. Cordis Corp. (2011) further explaining and limiting In re Seagate Technology, LLC, (2007) (en banc). Those are but highlights. Federal Circuit opinions even over the brief span of two years have created law that practitioners must know especially in light of the changing composition of the court.
Smoothing the Troubled Waters? PRG formerly characterized this course as Recognizing & Understanding Federal Circuit Russian Roulette. The continually strong attendance at presentations of this Federal Circuit course suggests that the patent bar recognizes this aphorism to ring true. In many respects, this is a user-designed dynamic course. Course evaluations are collected and analyzed to determine the topics and emphasis users desire. For the many that have attended this course punctually every two years, the curriculum, in response to user input, retains the topics you have come to expect, but has been expanded to include separate chapters and lectures on Federal Circuit en banc cases and Supreme Court cases, selected important cases that do not conveniently fit within a single topic (crossover cases) as well as noteworthy practice & procedure cases, noteworthy appellate practice cases, joint infringement, and selected Hatch-Waxman cases, among others and now including the AIA. All of the above represents just some of the continually breaking judicial news from the Federal Circuit that will be covered at the Federal Circuit Law course. As attested by hundreds of past course attendees, the faculty presents just the right amount of factual and legal detail for mastering each case discussed. Legal ethics and inequitable conduct will be presented on the second day from 3:00 to 4:00 p.m., as currently estimated.
Course Materials The full substance of the course is captured in the Federal Circuit Patent Law three-volume text, which extends over 1,500 pages. G Comment from previous attendee: I've been attending this course, periodically, over a number of years, and it continues to get better & better. Steven Fontana Fontana International October 2009 attendee
alm trees and fountains provide a perfect backdrop for a walk, jog, or bike ride through the Resort's grounds.
Patent Due Diligence in the AIA Era

Course Faculty
15.0 Hours
The faculty, considered collectively, have participated in over 100 due diligence evaluations and will take you through the process soup to nuts, whether you are representing the target or the acquirer.
BRYAN DINER ANTHONY GUTOWSKI ANDREW HOLTMAN
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC AND RESTON, VA
Course Description his course will provide practical guidance for conducting patent due diligence investigations in todays changing legal environment. The panel will explore how the America Invents Act (AIA) and recent decisions of the Supreme Court and Federal Circuit dramatically affect the due diligence process, while sharing practical techniques and strategies for conducting complete investigations. These tactics apply to both large and small transactions, irrespective of the nature of the specific transaction or the party you might be representing. Now, more than ever, companies contemplating commercial transactionsbe they licensing, corporate mergers, acquisitions, or private equity dealsneed to rely on due diligence counsel to provide a thorough understanding of the value and risks associated with the transfer of intangible assets.
Why Should You Take This Course? As todays tight economy continues to challenge the business of clients, pressure mounts for the patent practitioner to help clients enjoy a higher return on investment in deals involving both acquisitions and licensing-in of patent rights. By the same token, those who represent target companies need to learn the IP strategies that help maximize income from either takeovers or licensing-outs. Attendees consistently grade the Due Diligence course and its faculty with some of the highest ratings of any course that PRG offers. This critically acclaimed course will help you raise your game to new levels, whether you are representing suitors or targets. Sign up now for this 2 day course. Sure, youll miss some time out of the office. But your return on investment will be a finely honed ability to help clients see an increase in their returns on investment.
Comments from previous attendees: Bryan, Tony and Andy are dynamic, very experienced with lots of tips and past cases to share. Jennifer Arnold MBM Intellectual Property Law April 2011 attendee The balance between the course matter and case law was perfect and appropriate. David Hayzer Ph.D. Thomas Kayden Horstemeyer & Risley LLP April 2011 attendee [I liked] the fluency and knowledge of the lecturers on the subject. The content and the lecturers are excellent. Im sure this course can help both patent and non-patent attorneys. April 2011 attendee
During the course, you will interact with instructors and other students while exploring case-study examples and lecture topics on a wide range of issues: common legal-interest agreements claim construction freedom to operate validity assessments inequitable conduct (including a discussion of the Federal Circuits Therasense decision) patent eligibility (including a discussion of the Supreme Courts Prometheus decision), and ownership/transferability. The lively and entertaining presentation covers every phase of a due diligence investigation. Beginning with the initial involvement of patent counsel, the panel navigates a course through early informationgathering, drawing in the attendees as part of the due diligence team to spot critical patent issues that can make or break a deal. The panel
also shares effective strategic approaches to focus investigations and requests for further information during the plunge into the data room and to facilitate making recommendations to the client that may ultimately affect the price and structure of the deal. On Day 1, from approximately 2:30 to 4:45 p.m., as currently estimated, we will discuss potential ethical issues and inequitable conduct hazards that may arise during an IP due diligence investigation. The concluding sessions of the course cover
risk-management issues that provide invaluable, practical suggestions for contractual considerations, including effective uses of representations and warranties. Topics discussed in the course apply both to investigating a targets patent portfolio and to preparing a portfolio for suitors. Youll receive a thorough course book, chock full of notes, examples, and case law. The facultypartners at Finneganare all patent attorneys with extensive experience in due diligence investigations. The panel has
many years of experience in IP practice and expertise in several different areas of technology. Throughout the course, the faculty shares interesting war stories, observations, and practical tips for conducting the investigation in a comprehensive and efficient manner. In short, the knowledge youll gain from this course will enable you to avoid due diligence pitfalls, while more effectively assessing and managing risks endemic in business transactions involving complex IP rights and issues. G
oak in the California sun and relax with a book on your e-Reader by one of the Resort's seven outdoor pools.
Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination

15.0 Hours
Course Faculty The instructors have extensive experience representing both patent owners and accused infringers in reexaminations and frequently file and prosecute reissue applications. They are actively involved in bar associations efforts to help the PTO design and implement the new review proceedings created by the America Invents Act (AIA). They have written widely on reexamination, reissue and review topics for Intellectual Property Today.
KEVIN B. LAURENCE
MATTHEW C. PHILLIPS
STOEL RIVES LLP SALT LAKE CITY, UT AND PORTLAND, OR
Course Description
Why Should You Take This Course? About 5-6 years ago, reexamination emerged as a popular venue for validity challenges, either alone or alongside court battles. The reasons for that shift were simple. The PTOs Central Examination unit provided a forum where claims are given their broadest possible interpretation. In addition, a reexamination can result in many favorable outcomes, at a small fraction of the cost of litigation. The America Invents Act (AIA) shifts the balance even further in favor of the PTO as the patent validity battlefield of the future by creating new, more powerful, fast-track, litigation-like review proceedings, including post-grant review and inter partes review. Whatever side of the battle you are on, you must know how to engage in the new battlefields called review as well as the existing battlefield called reexamination.
Ten years ago courts were essentially the sole arbiters of validity. About 5-6 years ago, reexamination emerged as a popular venue for validity challenges, either alone or alongside court battles. The reasons for that shift were simple: Would you rather bring your validity attack before an experienced patent examiner in the PTOs Central Reexamination Unit where the claims are given their broadest reasonable interpretation and do not enjoy a presumption of validity, or a jury in the Eastern District of Texas? The answer becomes all the more obvious when one considers that a reexamination can cancel claims, eliminate liability for past infringement, create intervening rights to continue accused infringement in the future, open up design-around opportunities, create a more favorable prosecution history, defeat a charge of willful infringement, help avoid an injunction, bolster an inequitable conduct defense, and sometimes enable a stay of expensive litigation. All of this can be achieved at a small fraction of the cost of litigation. The America Invents Act (AIA) shifts the balance even further in favor of the PTO as the patent validity battlefield of the future by creating new more powerful, fast-track, litigation-like review proceedings, including post-grant review and inter partes review. These reviews will be decided by a panel of three administrative judges within 12-18 months after being instituted, will permit limited discovery, and will be appealed directly to the Federal Circuit. These new proceedings significantly improve on the structure of their predecessor, inter partes reexamination, just as inter partes reexamination was surging in popularity.
he battleground of patent validity is shifting from courts to the PTO.
Comment from previous attendee: The materials are outstanding. I will use as reference materials in the future. Lecturers were wide open to questions and very responsive. Interspersing of war stories and examples kept the presentation interesting. Charles Burpee Warner Norcross & Judd LLP October 2009 attendee
This two-and-a-half-day course provides comprehensive training on indispensible tools for patent prosecutors and litigators, including new tools created by the AIA: Ex parte reexamination Inter partes reexamination Post-grant review (new under the AIA) Inter partes review (new under the AIA)
Transitional program to review business method patents (new under the AIA) Reissue Supplemental examination (new under the AIA) The course covers strategies, tactics, best practices and case studies for reexamination and reissue. In addition, the course will cover the statutory and regulatory framework for the AIAs new review proceedings and supplemental examination. The course is for both patent practitioners who appear before the PTO in these proceedings, as well as litigators who must deal with the increasingly common role of PTO proceedings in the context of disputes. For patent challengers, the course provides training to: Analyze the benefits and disadvantages of reexamination and review as compared to litigation Make well-informed choices between all types of reexamination and review proceedings Understand the critical role of reexamination and review in the context of a dispute and develop reexamination and/or review strategies based on anticipated or concurrent litigation Appreciate estoppel implications both official and unofficial of reexamination and review Utilize reexamination and review to obtain a stay or other benefits in related litigation
Unravel the AIAs review statutes and decipher the PTOs proposed review rules to really understand how reviews will be conducted Prepare a request for reexamination or petition for review that complies with all requirements and gets granted Learn what the reexamination statistics really mean Advantageously utilize the different standards applied for claim interpretation at the PTO and claim construction in litigation as well as the differing burdens of proof Recognize possible changes to the construction of the claims in the litigation based on the reexamination or review that opens up design-around opportunities, creates a more favorable prosecution history for the purpose of claim construction, or impacts estoppel theories Create intervening rights that eliminate liability for past infringement or allow continuation of accused infringement in the future Tactically use serial ex parte reexamination requests and protests in reissue Correctly and strategically use petitions and declarations Understand the repercussions that reexamination and review can have on settlement The course balances the perspectives of patent challengers and patent owners so the above items are also presented from the view of the patent owner. Additionally, the course provides training for patent owners to:
Choose between ex parte reexamination, reissue and supplemental examination to immunize a patent from a third-party attack Avoid, when possible, intervening rights that arise via the cancellation or amendment of claims or from mere argument regarding claim scope Defensively utilize related proceedings, reissue continuations and merger to maximize flexibility and advantage Select information to be disclosed to the PTO from concurrent litigation or other PTO proceedings Understand the timing of events in all postissuance PTO proceedings so that you are not caught off guard Navigate the maze of reexamination and reissue procedures to avoid unfortunately common mistakes Master the recapture rule in reissue applications Understand when and how to utilize a certificate of correction or disclaimer, rather than reexamination, reissue or supplemental examination Many other topics related to post-grant PTO proceedings are covered in the course. Legal ethics in the context of reexamination and reissue prosecution will be presented from 10:15 a.m. to 11:15 a.m. on the third day, as currently estimated. G
egency Club members can enjoy the Regency Club Lounge for meals or just to relax and enjoy the views of the pools and the San Jacinto Mountains.
PRGs Fall Conference Hotel Hyatt Grand Champions Resort, Villas and Spa Indian Wells, CA October 17-23, 2012
44-600 Indian Wells Lane Indian Wells, CA 92210 760-341-1000 or 800-233-1234
Reservations: 760-341-1000 or 800-233-1234 For information, please go to www.patentresources.com/HotelOverview.aspx and click on the Hotel Information link for Hyatt Grand Champions Resort, Villas and Spa. Room reservations must be made by October 3, 2012. When making your reservation, be sure to identify yourself as a Patent Resources Group attendee to obtain the special PRG rate. Room rate: The sleeping room rate available to PRG attendees is only $169.00 per night, single or double, plus tax. This rate is 20% less than what we were able to offer the last time we hosted our Advanced Courses at the Hyatt Grand Champions! Receptions for Attendees and Faculty: PRG receptions provide an opportunity for networking, plus delicious, complimentary hors doeuvres and beverages on the first evenings of class: Wednesday, October 17 and Sunday, October 21. Spouses, children and guests of attendees and faculty are welcome and are certain to have an enjoyable time. Transportation: The Resort is about 15 miles (less than 30 minutes) from the Palm Springs International Airport (PSP). The Resort offers both valet parking and self-parking.
Don't Miss This Deal!

his rate of $169 per night is 20% less than what we were able to offer in 2007, the last time we were at the Hyatt Grand Champions Resort, Villas and Spa.
PRGs 2012 Annual Fall Conference will be held at the lavish Hyatt Grand Champions Resort, Villas and Spa in Indian Wells (Palm Springs), CA.
A Truly Amazing Venue

This elegant AAA Four Diamond resort is nestled between the San Jacinto and Santa Rosa mountains in its own 45-acre oasis of formal gardens and lush southern California landscape. Enjoy the seven outdoor pools, the 36-hole Indian Wells Golf Resort, three tennis courts, fully-equipped 24-hour fitness center, and the Agua Serena Spa and Salon. Camp Hyatt provides a variety of supervised entertainment and hands-on activities for children ages 3-12 (advance reservations suggested). Dining options include Lantana, serving indoor or outdoor breakfast, lunch, and dinner; the Agave Sunset lobby bar for cocktails and appetizers; and the Espresso Deli and Cafe, offering coffee and quick meals. The Oasis pool bar and the Roadrunner Cafe offer California casual fare. The Resort also offers a full-service business center, secretarial support services, gift shop, hair salon, and concierge. In addition, Palm Springs world-class shopping district is nearby. For more information about the Hyatt Grand Champions Resort, Villas and Spa, go to: http://grandchampions.hyatt.com/hyatt/ hotels-grandchampions
Hyatt Grand Champions Resort, Villas and Spa
REGISTRATION
Indian Wells, CA October 17-23, 2012
Registration Deadline: October 3, 2012
Three-Day Courses:
Tuition for each three-day course is $2,195. October 17-19, 2012 (Wed-Fri)
Federal Circuit Law (2010-2012) Patent Due Diligence in the AIA Era Post-Grant Patent Practice: Review,
Two-Day Course:
Tuition for the two-day course is $1,995. October 17-18, 2012 (Wed-Thurs)
Claim and Specification Drafting for a
One-Day Course:
Tuition for the one-day course is $995. October 20, 2012 (Sat)
Single EPO/USPTO Patent Application
GNEW COURSE America Invents Act:
Monumental Changes, the Consequences and the Unanswered Questions
Reexamination, Reissue, and Supplemental Examination
October 21-23, 2012 (Sun-Tues)

Art & Science of Patent Searching Art & Science of Patent Searching and
Tel: 703-682-4860 Fax: 703-892-4510
www.patentresources.com
For information about registration deadlines; cancellation, transfer and substitution privileges; CLE; and other details, go to: www.patentresources.com
Loyalty Program members save $200 on tuition for every course at this Conference!
Patentability, Validity & Infringement
Optional Patent Searching Workshop (combined course and workshop is $2,590)
Please note that the faculty members listed for each course are subject to change prior to the actual course date.
I am an ACTIVE member of a State Bar that requires mandatory CLE hours. My State(s) & my Bar ID number(s) are:
Crafting and Drafting Winning Patents Designing Around Valid U.S. Patents Drafting Patent License Agreements
1. __________ _________________________ STATE ID NO.

MR. DR. MS. PROF.
2. ___________ STATE
______________________ ID NO.
Name ___________________________________________ Title ________________________ Tel _____________________________________________ Fax ________________________ email ________________________________________________________________________
PLEASE PRINT
REGISTRATION OPTIONS: Mail or Overnight: 1725 Jamieson Avenue Alexandria, VA 22314 FAX: (703) 892-4510 ONLINE: www.patentresources.com You may register online or by fax, mail or courier. You may submit tuition either by check, payable to Patent Resources Group, Inc., or by credit card (charges are authorized by your completion of this form). The course tuition does not include hotel accommodations or meals, but does include all instructional materials, and morning and afternoon refreshments, as well as PRGs reception-cocktail party.
Brochure Code: A12M2
Organization ______________________________________ Suite or Mail Stop No. ___________ _________________________________________________________________ Street Address ORG. City/State ________________________________________ Zip Code ____________________
HOME
Charge $______________________ to: VISA MasterCard American Express

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If the credit card billing address is not the same as on this form, enter the billing address here:
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Special August 2012 America Invents Act (AIA) Conference!

Join us in the Washington, DC area at the Hyatt Regency Crystal City on August 13, 2012 for a special one-day Advanced Courses conference focused on the impacts of the America Invents Act of 2011.
n this focused one-day conference, we will provide an overview of the changes and consequences introduced by the America Invents Act. This will be an updated version of the course we first introduced at our Spring 2012 Advanced Courses Conference, with multiple speakers providing the latest insights and perspectives into the key provisions of this major legislation. This is a conference that every patent practitioner should attend, in order to avoid the risks that the AIA poses to the poorly informed. Tuition is $995, and Loyalty Program members pay only $795. More details about this conference are available at www.patentresources.com.
The Perfect Course for Patent Support Professionals!

Patent Administration A Foundation for Success is a complete and thorough 2.5-day certificate course designed to provide patent support professionals paralegals, secretaries, and administrators with both a firm understanding of the fundamentals of patent law and practical tips and advice that can be applied on a daily basis to save time and ensure success in interactions with the USPTO. Have your staff join us at one of two 2012 sessions: August 13-15, 2012 in Washington, DC September 10-12, 2012 in New York City
Visit our website at www.patentresources.com to see the detailed course syllabus and to register online. Tuition for this outstanding course is only $795.00!
atent Resources Group, the Alma Mater of 40,000 patent attorneys and agents, now offers customized ON-SITE training for selected courses on a negotiated basis! This is the perfect option for corporations that have 10 or more employees who need the same training. We'll come to your location and will customize the content as needed to meet your specific needs. If you prefer, we can also offer these courses remotely through webconferencing or videoconferencing.
PRG is currently offering these courses* ON-SITE:

Art and Science of Patent Searching: Patentability, Validity & Infringement This course comprehensively teaches how to conduct a professional patent search. The materials and content will be understood by anyone, from the inexperienced to advanced practitioners. The course is perfect for patent attorneys and agents, inventors, paralegals, or research managers anyone who will be involved in conducting searches or commissioning searches. Patent Law Guide for Inventors, Investors, Paralegals & NonPatent Lawyers This course presents that which the inventor, paralegal, and administrator should know (really, must know, according to case law) about patent law and its practice. It provides a bedrock of basic and empowering patent law information that will also be invaluable to non-patent attorneys engaged in any aspect of patent activity, such as licensing, litigating, or counseling.
Contact SVP-Sales Ted Klekman at (916) 404-3908 to learn more.
*Interested in having other courses taught on-site at your location? Ask us!
PRG is Accessible Wherever You Are!
ou are already familiar with our website at www.patentresources.com. But you can now also keep up with PRG on Twitter and Facebook.
Follow us on Twitter for interesting patent discussion and PRG course updates at http://www.twitter.com/PRGPatentLaw. Become a fan on Facebook to get the latest news at http://www.facebook.com/PatentResourcesGroup.
June 18-22, 2012 Patent Bar Review Course Boston, MA Revere Hotel Boston Common
August 13-15, 2012 Patent Administration: A Foundation for Success Washington, DC (Arlington, VA) Hyatt Regency Crystal City
September 10-14, 2012 Patent Bar Review Course New York, NY Concierge Conference Center
July 17-20, 2012 Winning Patents Workshop Washington, DC (Arlington, VA) Hyatt Regency Crystal City
August 13, 2012 Advanced Courses Conference Washington, DC (Arlington, VA) Hyatt Regency Crystal City
October 17-23, 2012 Advanced Courses Conference Indian Wells, CA (Palm Springs) Hyatt Grand Champions Resort, Villas and Spa
July 31-August 3, 2012 Winning Patents Workshop Newport Beach, CA (Orange County) Radisson Hotel Newport Beach
September 10-12, 2012 Patent Administration: A Foundation for Success New York, NY Concierge Conference Center
November 5-9, 2012 Patent Bar Review Course San Francisco, CA Executive Conference Center
Register online now at www.patentresources.com


1 7 2 5 J A M I E S ON AV E N U E ALE XANDRIA, VA 22314
Presorted Standard U.S. Postage PAID Graphics East, Inc.
You cant afford not to invest in your future. See page 2 for details and register today at www.patentresources.com.
Be Prepared for the America Invents Act!
UNPARALLELED COURSES AT AN AMAZING VENUE! INDIAN WELLS, CA OCTOBER 17-23, 2012

Patent Resources Group provides the industry's leading patent law education programs. The company has taught patent law and related courses to 40,000 patent attorneys, agents, engineers and scientists since 1969.
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PATENT RESOURCES GROUP

ADVANCED PATENT L AW COURSES

ESTABLISHED PATENT PRACTITIONERS

THE ALMA MATER

40,000 PATENT ATTORNEYS

Register now at www.patentresources.com

About PRGs Loyalty Program

Hyatt Grand Champions Resort, Villas and Spa

Patent Due Diligence in the AIA Era . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

Chemical Patent Practice

Crafting and Drafting Winning Patents

Designing Around Valid U.S. Patents

Drafting Patent License Agreements

............................................. Faculty: D. Patrick O'Reilly, Brian Kacedon, and William Pratt

Projected State Bar CLE Credit:

PATENT RESOURCES GROUP ALEXANDRIA, VA

njoy breathtaking views of the natural beauty of the Resort's surroundings.

Art and Science of Patent Searching Patentability, Validity & Infringement

LANDON IP, INC. ALEXANDRIA, VIRGINIA

his course comprehensively teaches how to conduct a professional patent search.

Optional Patent Searching Workshop

Chemical Patent Practice

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC

Claim and Specification Drafting for a Single EPO/USPTO Patent Application

both patent prosecution and litigation for multinational clients.

Brought to you in partnership with:

Crafting & Drafting Winning Patents

Designing Around Valid U.S. Patents

Drafting Patent License Agreements

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP WASHINGTON, DC

Federal Circuit Law (2010-2012)

INCLUDING COMMENTARY on the America Invents Act

Patent Due Diligence in the AIA Era

Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination

STOEL RIVES LLP SALT LAKE CITY, UT AND PORTLAND, OR

he battleground of patent validity is shifting from courts to the PTO.

Don't Miss This Deal!

A Truly Amazing Venue

Hyatt Grand Champions Resort, Villas and Spa

Single EPO/USPTO Patent Application

GNEW COURSE America Invents Act:

Monumental Changes, the Consequences and the Unanswered Questions

Reexamination, Reissue, and Supplemental Examination

PATENT RESOURCES GROUP

October 21-23, 2012 (Sun-Tues)

Tel: 703-682-4860 Fax: 703-892-4510

Patentability, Validity & Infringement

Chemical Patent Practice

Optional Patent Searching Workshop (combined course and workshop is $2,590)

1. __________ _________________________ STATE ID NO.

Charge $______________________ to: VISA MasterCard American Express

PRINT Name of Cardholder SIGNATURE of Cardholder

Corporate Customer Code (if applicable) ___________________

Credit Card # _______________________________ Exp. ________/__________

Special August 2012 America Invents Act (AIA) Conference!

The Perfect Course for Patent Support Professionals!

PRG is currently offering these courses* ON-SITE:

Contact SVP-Sales Ted Klekman at (916) 404-3908 to learn more.

PRG is Accessible Wherever You Are!

Register online now at www.patentresources.com

PATENT RESOURCES GROUP

Presorted Standard U.S. Postage PAID Graphics East, Inc.

PATENT RESOURCES GROUP

1. _______________ STATE ID NO.

Credit Card # _____________________ Exp. /