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Top 10 Events in Patent Law and Prosecution in 2012


Product Code - LGN96
Speaker(s): Irah H. Donner, Stroock & Stroock & Lavan LLP
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This program will address the top events and cases from 2012 that you need to know about to have a fully-informed patent law practice.

The Smith-Leahy America Invents Act (AIA), significant parts of which became effective on September 16, 2012, will be discussed as well as relevant United States Supreme Court Cases such as Kappos v. Hyatt, which was concerned with no limitations on a patent applicant's ability to introduce new evidence when appealing to the district court under 35 U.S.C. § 145 beyond those already present in Federal Rules of Evidence and Federal Rules of Civil Procedure, and Mayo Collaborative Services v. Prometheus Laboratories, Inc., in which the court held that an invention on natural correlations between drug doses and toxin levels was not patent eligible and that the invention and claims did not transform unpatentable natural correlations into patentable applications of those regularities.

The faculty will also discuss Federal Circuit en banc cases such as Akamai Tech. v. Limelight Networks, in which it was found that all the steps of a claimed method must be performed to find induced infringement but that it is not necessary to prove that all the steps were committed by a single entity, and Marine Polymer Technologies, Inc. v. HemCon, Inc., where it was decided that mere statements made during reexamination will not create intervening rights for accused infringers, even if the statements result in a narrowing claim construction.

Federal Circuit cases on subject matter eligibility for computer related inventions and patenting of DNA sequences and cases affecting claim interpretation and patent application drafting will also be addressed.

Educational Objectives:

• Understand the effects on current reexamination practice.
• Find out about the basis and procedures for the new third party challenges.
• Learn strategic uses of third party challenges versus litigation.
• Gain an understanding of the potential pitfalls of third party challenges.

Program Level: Intermediate to Advanced.

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

Irah H. Donner, Stroock & Stroock & Lavan LLP

Irah H. Donner, Stroock & Stroock & Lavan LLP
Irah Donner is a partner in the intellectual property department in the New York office of Stroock & Stroock & Lavan LLP, where he specializes in the counseling, acquisition and enforcement/litigation of all forms of intellectual property rights, with particular emphasis in computer software, Internet, biomedical devices, computer hardware, financial and electronics applications.

Before pursuing a career in law, Mr. Donner worked as a control engineer, designing software implemented controllers for functional neuromuscular stimulation of paralyzed muscle at the Cleveland Veterans Administration Hospital. He also designed software applications for large scale computer systems at Bell Communications Research (BELLCORE) in the facility analysis.

Mr. Donner is author of the books Patent Prosecution: Law, Practice, and Procedure, Seventh Edition, with 2012 Supplement and Constructing and Deconstructing Patents, published by Bloomberg BNA. He has published many articles, including articles on the patenting of computer software and hardware-related applications.

Mr. Donner earned a J.D., magna cum laude, from Case Western Reserve University School of Law, where he served on the editorial board of the CWRU Law Review. He earned an M.S. in systems engineering and a B.S. with high honors from Case School of Engineering. Mr. Donner is registered to practice before U.S. Patent and Trademark Office and is admitted in New York, New Jersey and the District of Columbia.

This program is CLE-credit eligible.

If you have further questions regarding a specific state or how to file for CLE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the Legal and Business CLE Accreditation Coordinator.

Hardship Policy
Bloomberg BNA offers a hardship policy for attorneys earning less than $50,000 per year. If an attorney wishes to take advantage of this option, he or she must contact Bloomberg BNA directly. For attorneys who are unemployed or earning less than $35,000 per year, a full discount off the price of the program will be awarded upon written proof of hardship. Attorneys earning between $35,000 and $50,000 per year will receive a 50% discount off the price of the program. Any attorney working in the public service sector also qualifies for a special price. If you have further questions regarding the hardship policy or seek additional information, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to Lindsey Pace, CLE Accreditations Coordinator, or email us at accreditations@bna.com.

Questions
For more information about Mandatory or Minimum Continuing Legal Education (MCLE) requirements, visit the American Bar Association website at http://www.abanet.org/cle/mandatory.html.