Roadblocks Ahead: Refusal/Rejection and Options for Further Action

Join the usual suspects from Finnegan as they take you through a detailed discussion of patent prosecution strategies from drafting to grant. For the first time the Finnegan webinar series will take you step by step through the patent prosecution process focusing on concepts and strategies that have been of interest to webinar participants over the years. The course format will allow us to provide more in depth analysis in an open discussion format. We encourage everyone to join us live or on-demand for one or all of the sessions.

Recorded: View Downloadable File
13 December 2017 | Roadblocks Ahead: Refusal/Rejection and Options for Further Action 

If you come up against a brick wall during examination at the European Patent Office (EPO) or the United States Patent and Trademark Office (USPTO), a number of options and strategies may still be available to you. Please join us for the final part of Finnegan’s 2017 webinar series, as we discuss what can be done to move your case forward and improve the likelihood of a successful conclusion when you receive a summons to oral proceedings from the EPO or a final office action from the USPTO.

• Typical timelines—how many rounds of examination to expect and how to plan ahead
• EPO oral proceedings—strategies for avoiding refusal
• Final Office Actions at the USPTO—options for moving forward
• Use of continuation or divisional applications to maintain prosecution
• Pros and cons of taking a case to appeal

Moderator:
Eric P. Raciti

Speakers:
Hazel Ford, Ph.D.
Yelena Morozova

Date:
Wednesday, 13 December 2017

Time:
15:00-16:00 GMT
16:00-17:00 CET
10:00-11:00 EST

Scheduling Conflict? Finnegan records all hosted webinars. To view the recorded program, simply register for the webinar and you will receive an access link shortly after the live program is complete.

Recorded: View Downloadable File
25 October 2017 | Strategies and Procedures for Effective and Streamlined Prosecution 

Not all patent applications are of equal value or have the benefit of available time. Priorities can change during prosecution, and in this fast-paced world of evolving technology and changing business needs, it is vital that patent systems keep up. Please join us for a discussion on the procedures available in Europe and the United States to control the pace and cost of prosecution. We will review the options, advantages, and risks for expediting or delaying patent prosecution, as well as the typical reasons for accelerating or slowing down examination. Topics include:

• Initiatives for Cutting Delays: Accelerated Prosecution (“Pace”), Early Certainty from Search; and Early Certainty from Opposition
• Making the Most of USPTO Initiatives: Post-Prosecution Pilot Program (“P3”); Track One Examination; and After Final Consideration Pilot 2.0
• The USPTO Examiner Count System and the USPTO Automated Interview Request (AIR) Procedure
• Proactive Prosecution of PCT Applications: PCT Direct; International Search and Examination at the EPO
• Double patenting, continuations, and other portfolio-level strategic considerations for pursuit of accelerated or delayed examination

Recorded: View Downloadable File
6 September 2017 | Prior Art: Understanding & Attacking Prior Art Rejections 

Join us for a compare and contrast discussion on what constitutes prior art in the United States and in Europe, and how to respond to rejections over that art. Relying on over sixty years combined prosecution experience before the USPTO and EPO, the speakers will offer attendees concrete strategies for addressing novelty and inventive step/obviousness rejections.

• What qualifies as prior art (pre- and post-AIA) and why prior art in the United States may not be prior art in Europe, with a specific focus on AIA changes to sales and offers for sales, “secret” prior art, and the ability to swear behind certain types of prior art
• Attacking inherency rejections, in the context of novelty and, yes, even obviousness
• Strategies for overcoming inventive step/obviousness rejections, including rejections using “common general knowledge” and multiple references
• Strategies for effective use of objective evidence of non-obviousness

Recorded: View Downloadable File
14 June 2017 | Drafting the “Global” Patent Application 

It all starts with drafting. A poorly drafted patent application, more often than not, leads to poor patent protection. The goal of providing enforceable claims starts and ends with a well drafted application. And what may be a well drafted European patent application may not provide the same level of protection in the United States (and vice versa!!). The differences can be confusing for even the most seasoned practitioner: Patent Eligibility vs. Technical Effect; Enablement vs. Sufficiency; and maybe the most frustrating of all—Written Description vs. Added Matter.

• The evolving definitions of patent-eligible subject matter
• How much is enough to file? Sufficiency, enablement, and written description
• Helping the examiner understand the invention: claim structure, clarity and amendment
• Thinking ahead: providing fallback patentability positions and claims for enforcement
• What can and cannot be fixed after filing

The series is accompanied by blog posts published on ProsecutionFirstBlog.com. This free resource provides news and information about patent prosecution practice before both the USPTO and EPO.