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 & Patent Claim Drafting Workshop

This workshop concentrates on interviewing inventors and on drafting mechanical, electrical, process, and computer hardware and software patent claims in groups of two or three (of similar experience levels). Using an overhead projector, each of the claims drafted and corresponding claims drafted by the Instructor are critiqued by the entire group.

The group also participates in patent prosecution exercises requiring each attendee to analyze and respond to prior art rejections and amend previously drafted claims in view of the cited prior art. In addition, the Instructor initiates dialogues directed to subject matter of the type recited in the sample syllabus provided in this brochure and leads role playing activities in which "difficult" inventors and patent examiners are interviewed by the group. WHERE APPROPRIATE, ASPECTS OF THE NEW AMERICA INVENTS ACT WILL BE DISCUSSED, ESPECALLY INCLUDING FIRST TO FILE AND DRASTICALLY CHANGED 35USC102.

About the Workshop

  • Two full days of drafting and critiquing claims and interviewing inventors.
  • Limited to at most 16 participants, thereby permitting individualized attention.
  • Geared to patent practitioners (attorneys and agents) of all experience levels and particularly to practitioners having 0-3 years experience.
  • Also helpful to experienced attorneys. Previous in-house workshops were conducted for experiences attorneys at Eastman Kodak and Caterpillar.
  • Excellent way for foreign practitioners to gain U.S. claim drafting skills.
  • MCLE approved for 16 credits.
  • Round table discussions and role playing exercises directed to such topics as:
    • interviewing inventors and Patent Examiners.
    • the meaning of 35USC102 (both present and post AIA 35USC102.)
    • obligations under Rule 56.
    • the Doctrine of Equivalents and 35USC112(6).
    • analyzing and responding to Patent Office actions.
    • strategies involved in preparing a patent application.

Some Prior Participants

Blakely, Sokoloff, Taylor and Zafman (in-house many times) • Fish & Richardson (in-house) • Dorsey & Whitney • Nokia Corporation • Gray, Cary, Ware & Freidenrich • Beyer, Weaver & Thomas • Hewlett-Packard • IBM • Ericsson Communication • Wilson, Sonsini, Goodrich and Rosati • Caterpillar Corporation (in-house twice) • Townsend, Townsend & Crew (in-house twice) • Cooley Godward • McCutchen, Doyle, Brown & Enerson • Brinks, Hofer, Gilson & Lione (in-house many times) • Christie, Parker & Hale (in-house) • Eastman Kodak (in-house twice)

Endorsements

"We recently retained Steve Shear to teach a course on patent application drafting and claim drafting for new associates and law clerks. Steve did a wonderful job and we have found the course greatly helped in moving our younger people along without taking up our experienced people's time." --Ed Taylor, Blakely, Sokoloff, Taylor & Zafman

"The consensus is that the claim drafting seminar for experienced patent practitioners was very worthwhile and that Steve Shear did an excellent job." --A.P. Lorenzo, Eastman Kodak Patent Department

"Great hands on, practical experience; practical pointers; small class size...Excellent...I would highly recommend this course to other young practitioners." --Prior Participant

"It was an effective, highly focused effort on claim drafting." --Prior Participant

"Good emphasis on the basics of claim drafting. The group discussions and atmosphere were excellent." --Prior Participant

"Very interactive and good exchange of differing ideas." --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

Sample Syllabus

DAY ONE

1. Introductions 8 a.m. - 9 a.m.

  • All Participants will discuss their backgrounds and experience and get better acquainted.
  • An overview of the workshop will be provided.

2.Drafting/Critiquing First Claim 9 a.m. -10:30 a.m.

  • All claims in this workshop will be drafted in groups of three or four and transferred to a transparency for critiquing using an overhead projector. All claims will be critiqued by all participants. In addition, the instructor will submit a claim which will be critiqued. For each claim, "the inventor" will be interviewed.

3. Drafting/Critiquing Second Claim 10:30 a.m. - 12 noon
4.Working Lunch 12 noon - 2 p.m.

  • A group discussion devoted to interviewing an inventor

5. Drafting/Critiquing Third Claim 2 p.m. - 3:30 p.m.
6. Group Discussion 3:30 p.m. - 5:30 p.m.

  • Decisions, particularly from the CAFC, will be discussed as these decisions relate to the doctrine of equivalents and 35USC112(6th paragraph) and current topics.

DAY TWO

1. Drafting/Critiquing Fourth Claim 8 a.m. - 9:30 a.m.
2. Drafting/Critiquing Fifth Claim 9:30 a.m. - 11 a.m.

  • This claim will be drafted in view of an actual first office action containing 102 and 103 prior art used by the Examiner to reject the claim as originally filed. Suggested Remarks to a proposed response will be discussed and a role play will be carried out in which an "Examiner" will be interviewed.

3. Group Discussion 11:00 a.m. - 12:00 p.m.

  • Rule 56 Duty of Disclosure issues will be discussed.

4. Working Lunch 12:00 p.m. - 1 p.m.

  • A group discussion devoted to the strategy involved in preparing a patent application including the specification, its background, the summary of the invention, and so on. This will include discussing concepts such as the importance of preparing the claims first, disclosing the best mode, and providing an enabling disclosure.

5. Drafting/Critiquing Sixth Claim 1 p.m. - 2:30 p.m.
6. Group Discussion 2:30 p.m. - 3:30 p.m.

  • A discussion on managing private and corporate patent practices.

7. Drafting/Critiquing Seventh Claim 3:30 p.m. - 4:30 p.m.
8. Days End 4:30 p.m. - 5 p.m.

  • General discussion / Q&A period

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