The U.S. patent system generally has two types of requirements for obtaining and enforcing a patent. These two types may be distinguished as those that focus on prior art and those that do not. Emphasis is often placed on meeting prior art-related requirements. But because statute or case law provides support for the invalidity or unenforceability of patents and claims for failure to comply with non-prior art-related requirements, these requirements are often just as important.

This program will cover topics including inventors and inventorship, the written description and enablement disclosure requirements, and the duty of candor and Information Disclosure Statement practice. Our faculty will also introduce the related topics of statutory subject matter and single-actor claiming. They will not only include a discussion of these topics highlighted by relevant case law but will also provide practical tips for staying on top of non-prior art-related requirements.

Educational Objectives:

• Recognize issues that may arise from non-prior art-related requirements for obtaining and enforcing a patent.
• Learn to draft, file and prosecute patent applications with a focus on non-prior art-related requirements to avoid certain issues from arising later.
• Find out about corrective measures that may be taken relative to a pending application or issued patent should an issue arise from certain non-prior art-related requirements.
• Gain an appreciation of non-prior art related requirements for obtaining and enforcing a patent as well as practical tips for dealing with those requirements.

Who would benefit from attending the program?

PTO stakeholders including practitioners, applicants and industry participants, particularly those with more day-to-day involvement in patent matters (both in-house counsel and law firms of all sizes).

Program Level: Intermediate.

Credit Available: CLE. For more information, please click on the “CLE Credit” tab.