In-House Workshops

Patent Seminars offers a variety of in-house workshops all of which can be customized to fit your firms needs. We are constantly offer new workshops so be sure to click below to learn more.

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Patents & The Patent Process Workshop

The Patents and the Patent Process workshop moves through the entire Patent Preparation and Prosecution Process starting with the Pre-Patenting Process which includes a completely filled out Invention Disclosure based on a fictitious invention (the "KickBack" putter), fictitious inventors (Arnold Plummer and Crash TeeBall), and a fictitious Assignee (PuttRite, Inc.). Where appropriate, aspects of the new America Invents Act will be discussed.

Thereafter, we will consider a draft patent application which is prepared and forwarded to the client and eventually finalized and returned to the client with formal papers to be executed by Plummer and TeeBall. Upon return of the executed application, we will file the latter in the USPTO with the executed formal papers and other required documents that we will consider. Once the application is filed, Post Filing/Pre-Office Action matters are attended to including, for example, mailing out a foreign convention letter. Upon receipt of a First Office Action, the latter is forwarded to the client and a Response is thereafter prepared and we will deal with forwarding it to the USPTO. This procedure is repeated for a Second, Final Office Action by the Examiner. The Workshop then moves in parallel through the Appeal Process and the Issuance Process. The Appeal Process starts with an Advisory Action and ends with an Appeal Brief, Examiner's Answer, Reply Brief and a Request for Oral Hearing. The Issuance Process starts with an Informal, then Formal Notice of Allowance and ends with paying the Issue Fee and Maintenance Fees. Finally, the Workshop addresses the preparation of Continuing Applications, Divisional Applications and CIPs and provisional applications.

Docketing dates are considered, and filled-out forms are provided at each step throughout the entire process with the aid of a 2 volume, 250+ page Handbook which explains what to do and why you do it (Vol. 1) and forms (filled-out) and client letters (Vol. 2). A series of proprietary timelines and key docket items are included.

The Handbooks that accompany this workshop can be purchased separately by visiting the Books section of this website.

About the Workshop

  • Nine hours of exposure to the Patent Preparation and Prosecution Process.
  • Limited to approximately 40 participants, thereby permitting individualized attention.
  • Geared to patent secretaries and paralegals of all experience levels and particularly to individuals having 0-2 years experience.
  • Especially helpful to new patent attorneys (CLE credits available) and agents.
  • Learn not only what to do, but why you do it.
  • Work with a two volume, approximately 250+ page Handbook with most everything you need.
  • Concentrate on the full range of docketing dates, as described in the Handbook.
  • Evaluate filled out Forms to and from the USPTO, as set forth in the Handbook.
  • Review Letters to the Client, also in the Handbook, as the process proceeds.
  • Learn how to read and understand correspondence from the USPTO including Office Actions and especially rejections under 35USC112, 102, 103.
  • Understand the legal requirements of obtaining a patent including statutory bars.
  • Receive a Certificate of Completion

Some Prior Participants

Blakely, Sokoloff, Taylor and Zafman (in-house) • Burns, Doane, Swecker & Mathis • Kodak (in-house) • Electrical Power Research Institute • Carr & Ferrell • Fish & Richardson (in-house) • Flehr, Hohbach, Test, Albritton & Herbert • Nokia Corporation • Gray, Cary, Ware & Freidenrich • Beyer & Weaver • Hewlett-Packard • IBM • Ericsson Communications • Limbach & Limbach (in-house) • Rogers & Wells (in-house) • Pennie & Edmonds (in-house) • Wilson, Sonsini, Goodrich and Rosati • Caterpillar • McCutchen, Doyle, Brown & Enerson • Townsend & Townsend & Crew (in-house) • Graham & James • Cooley Godward • Fish & Neave (in-house) • Foley & Lardner (in-house) • Sony Corporation • Hickman, Stephens & Coleman • Dorsey & Whitney • Howrey & Simon • Finnegan, Henderson, Farabow, Garett & Dunner • U.S. West • Storage Technology • Johnson & Johnson (in-house) • Kenyon & Kenyon (in-house) • Marshall, O'Toole, Gerstein, Murray & Borun

Endorsements

"We retain Steve Shear to teach a course on patent application drafting and claim drafting for new associates and law clerks. Steve does a wonderful job and we have found the course greatly helps in moving our younger people along." --Ed Taylor, Blakely, Sokoloff, Taylor & Zafman

"It looks like a lot of planning and organization went into the course. I really appreciated it and wished it was offered years ago when I started out." --Prior Participant

"I really liked the non-threatening approach and the way such complex material was handled. I especially enjoyed the real life examples and humor and the way you [Steve Shear] involved the audience." --Prior Participant

"The books were great. They were mega helpful and the instructor [Steve Shear] made the class upbeat, fun and very informative." --Prior Participant

"The workshop helped put together everything that we have been grinding out and wondering why ... The books are great resources." --Prior Participant

"The only way the books could have been better is if they were written exclusively for Blakely, Sokoloff." --Prior Participant

"Information was given in a way that made it easy to comprehend." --Prior Participant

"We have sent all our young people to Steve Shear's workshop and will continue to do so. It has become an integral part of our training program." --Steve Beyer, Hickman, Beyer & Weaver

Sample Syllabus

I. Patents in General

-- What is a patent, legally?
-- Territory
-- Duration
-- Types of Patents/Applications
-- Patent Structure
-- Legal requirements for a patent (35 USC 102, 103, 112, etc.)
-- Conduct Exercises relating to patentability, infringement, and legal requirements
-- The Absolute Novelty requirement in Europe, Japan, etc.

-- Aspects of the new America Invents Act

II. Patent Office Procedures

-- Governing laws
-- Organization of the PTO
-- The PTO process in general
-- PTO response periods
-- Fees

III. The Patent Process in Detail

-- The Pre-Patent Process
-- Preparation of the First Draft
-- Finalizing the Application
-- Filing the Application
-- Post Filing/Pre-Office Action Matters
-- Receipt of First Office Action
-- Receipt of Final Office Action
-- Notice of Appeal/Appeal Brief/Oral Hearing
-- Allowance of Application
-- Continuation/Division/CIP Practice
-- Provisional Application
-- Supplemental Declaration

-- Request for Continued Examination (RCE)

About the Instructors

Stephen C. Shear
A Former United States Patent Examiner, Steve has been practicing patent, trademark, copyright and other forms of intellectual property law for 40 years.

Prior to establishing the Law Offices of Stephen C. Shear, he was a partner at the Palo Alto law firm of Gray, Cary, Ware & Freidenrich and a senior partner at the San Francisco patent law firm of Flehr, Hohbach, Test, Albritton and Herbert (now part of Dorsey & Whitney).

He is the executive director and founder of Silicon Valley Seminars and has been conducting patent workshops since 1984.

Steve holds a B.S. degree (electrical engineering) from Washington University in St. Louis and a J.D. from American University, Washington College of Law. He has been an Adjunct Professor and Member of the Graduate Faculty at the University of Colorado, School of Engineering, a co-founder of a number of start-up companies including Phiar Corporation and XenoPur Systems, Inc. and has served as an expert witness in patent lawsuits.

Steve is also a published Novelist, Portrait and Figure artist, and Sculptor. Most of his work can be seen at www.steveshear.net.

Richard H. Shear
Rick, a former United States Patent Examiner at the United States Patent and Trademark Office, recently retired as Chief Patent Counsel for Monsanto Company. During his 25 year career with the company, Rick had responsibility for Monsanto's most important product, Roundup ® herbicide.

Rick has extensive experience in patent prosecution, especially in the chemical and biotechnology arts, as well as in litigation, including foreign litigation. He now has his own patent law practice providing legal services for all aspects of intellectual property.

Note: If you are just starting out in a patent career or starting a new office, please also see the SVS Workshop for Secretaries/Paralegals and New Attorneys/Agents and the books available from Silicon Valley Seminars.

The Handbooks that accompany this workshop can be purchased separately by visiting the Books section of this website

For Information About an In-House Workshop
Contact Steve Shear ([email protected])

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