The Inventor’s Role in Cost-Effective Patent Prosecution

About the Course: This session begins with a review of the steps involved with the typical patenting procedure — from disclosure forms to drafting the patent application and from moving the patent through the USPTO to enforcement. The session then goes into detail regarding the collateral the inventor should obtain for purposes of filing for patent protection. This course is full of high-impact advice regarding how inventors can cooperate with patent attorneys to achieve the strongest patent protection possible at the lowest costs achievable. The following are among the issues discussed during this seminar: Where in the patent prosecution process might an inventor incur criminal penalties for committing fraud? What should inventors know about the required forms of provisional applications? How long do inventors have to convert a provisional application into a utility or PCT application? What can an investor do to delay utility applications? To expedite utility applications? What are the benefits of design patents? When do they expire? How long do patentees have to decide which countries they wish to file for patent protection when filing a PCT application? What oath or declaration are inventors required to make whereby false statements could result in a prison sentence? What aspect of declaring inventorship is mandatory? Which aspect of declaring inventorship is discretionary? What are some methods to seek an expedited review of patent applications? What are the consequences of prior art being submitted by others? How long do inventors have to respond to Office Actions? What are the inventors’ responsibilities in responding to office actions? How can inventors refute examiners’ prior art? How important are interviews with the examiner? What is the significance of the Teaching Suggestion Motivation Test? What is the Common Sense Selection Test? How should inventors prepare declarations to overcome rejections by the examiner? When dealing with an intransigent examiner, is it typically better to try to replace your examiner or file appeals within the USPTO? What are the consequences of a patent-holder being able to broaden the claims of a patent upon the reissue of the patent? Course Leader: Joel H. Bootzin, Partner, Beem Law Firm Joel H. Bootzin is a patent attorney with over 15 years of experience. He manages U.S. and global patent portfolios for clients of all sizes, and he assists with the development of their worldwide patenting strategies. In addition, Mr. Bootzin counsels clients on avoiding patent infringement, working closely with client product development teams to provide opinions and suggest design-arounds. He also analyzes intellectual property portfolios for due diligence of potential merger, acquisition, or licensing targets. Mr. Bootzin has extensive experience working with a wide variety of mechanical, electro-mechanical, and electronic technologies including medical equipment; medical implants and their insertion tools; computer hardware, software, and networks; equipment monitoring systems; vehicle components and systems; sprinklers, filtration systems, and many more.
You need to purchase this course to view this content.

Or log in to access your purchased courses
0 learners on this course