Please note that the faculty members listed for this course are subject to change prior to the actual course date.
The Conundrum. Chaos now reigns supreme in Federal Circuit case law (and the judiciary of the U.S. district courts has 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-plus-function clauses, the doctrine of equivalents, and prosecution history estoppel.
What a dilemma this creates 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?
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 “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 PRG's Paul Gardner and Irving Kayton and enriched by the PRG course faculty.
This Crafting & Drafting course marches to a special drummer. Its focus is on the end result – producing a “winning patent” that will be held literally infringed and not invalid under §112, para. 1. 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:
- Prepare for drafting the application;
- Design what must be included in, and excluded from, the specification and drawings and, very importantly, in what form and format it should be included;
- 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;
- Develop a protocol and a philosophy for prosecuting the application that advance and do not defeat the efforts in (1) through (3); and
- 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.
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, with beneficial effect in license and litigation negotiations.
One hour of the course, from 9:45 to 10:45 a.m. on the third day, as currently estimated, will be dedicated to potential ethical and inequitable conduct issues that may arise during patent prosecution, with examples of Federal Circuit cases.
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, Workshop: How to Craft, Draft & Prosecute Patents That Win at the Federal Circuit, next offered from July 22-25, 2009 in Alexandria, VA. Click here for more information on the Workshop.
Please note that the faculty members listed for this course are subject to change prior to the actual course date.