Patent Prosecution Master Class — Best Practices for Drafting Claims and Prosecuting Medical Device Patents in the Post-AIA Landscape

March 4, 2015 9:00am

David J. Simonelli
Reising Ethington P.C. (Detroit, MI)

Patricia Bianco
Supervisory Patent Examiner
U.S. Patent and Trademark Office

Paul Lee
Senior IP Counsel
DexCom Inc. (San Diego, CA)

In this hands-on, interactive workshop, current PTO examiners and leading patent prosecution counsel will guide you through the new PTO landscape and share best practices on securing and maintaining patent prosecution cost-effectively. Learn successful techniques, identify practice pitfalls, and streamline the process by developing an understanding of how the new PTO operates. Topics for discussion include:

  • Analyzing how the AIA has affected and will continue to affect medical device patent practice
    • Exploring how the change from “first to invent” to “first to file” has impacted medical device patent practice
    • Adapting to the expansion of what constitutes “prior art”
    • Understanding the use of supplemental examination, ex parte reexamination, or reissue to cure defects before a patent is challenged
  • Speaking the language of the PTO — advanced techniques for claim drafting and patent examiner interviews
    • Delineating the meaning of claim terms in the specification
    • Balancing claiming broadly with the risk of validity challenges down the line
    • Claiming through functional language (update on recent cases)
    • Maximizing your opportunity to explain the science behind your device at the interview
    • Understanding the examiner’s perspective
    • Incorporating examiner interviews into your practice
    • Crafting an effective response to an inquiry or rejection
  • IDS practice — how the PTO handles supplemental examination of prior art and third party submissions