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Patents and Patenting for Inventors and
IP Managers


Patents and Patenting for Inventors and IP Managers

14 April 2017, Friday, 8:30am - 5pm


Holiday Inn Rochester Downtown, Corinthian Room
70 State Street Rochester, NY 14614, USA
tel: 1-585-546-3450

Patents and Patenting for Inventors and IP Managers
Friday, 14 April 2017


This introductory course targets inventors and intellectual property (IP) managers at the advanced undergraduate level. It is important that students have an advanced undergraduate level of English comprehension. It is intended that this course will enable those who wish to pursue patenting on their own to do so. Furthermore, those who work with patent counsel will be better schooled in working productively with counsel in patent drafting and patent prosecution. This course also will enable students to be more circumspect about patent counsel advice.

An overview of patents and patenting is presented, and then course lectures focus on examining practical aspects of drafting patent applications and claims as a specialized form of technical writing. Inventors are usually the most knowledgeable to draft such documents, and active engagement of inventors in patenting can dramatically expedite the time needed to file applications and to respond to various types of office actions issued by patent examiners.

Registration Form

Topics Covered:

Course Overview
  Course Outline - Intellectual property (IP) review - Types of patents - What do utility patents entitle you to?

Patent Application Morphology
  Title - Cross-References - Federal Sponsorship - Abstract - Background - Brief Summary - Drawings - Detailed Description - General and Best Mode - Claims

Patent Applications and Responses to Office Actions
  A specialized form of technical writing - The main attribute of this course - Examples of the range of papers generated during prosecution - References

  USPTO.gov - Technical Databases - Libraries

  Types of claims - Articles - Methods - Independent claims - Dependent claims - Multiple dependent claims - Claims dictate what is needed in specification - Drafting claims - Markush Claims

Drafting the Specification
  Abstract & summary - Background - Drawings - Detailed description - Examples - Prophetic Examples - Boilerplate - Incorporate by reference - The motivation for granting patents lies here

Prosecution Sequences
  Entity status - Filing - Fees - Assignments - Issuance - Licensing - Maintenance

Dealing with Rejection
  Office Actions - Amendments - Responses - Declarations and Affidavits - Approaches to Arguing

  Inventing Entities - Openly Known or Used - Disclosures - Abandoned Inventions - First Patented in Another Country - Invention Made by Other Than Inventor

  Level of Skill - Rebutting Prima Facie Obviousness - Basis in the Art - Obvious to Try - Defective Combinations - Problem and Source not in Prior Art - Prior Art Techies Away - All Claimed Limitations Considered - Unexpected Properties - Unforeseen Advantages - Prior Inventions of Applicant - Applicant's Admissions

Petition and Appeals
  Mechanics of Filing Petitions - Most Frequently Filed Petitions - Appeal to the Board, Amendments After Appeal - Notice of Appeal - Appeal Brief - Examiner's Answer - Reply Brief - Transfer to Board

Divisionals - Continuations - Continuation in Part
  Time Limits - New Matter - How Many Inventions May You Disclose?

Defensive Patenting Strategies
  Keeping Application Alive Until Buyer Found - Maintaining Right to Make and Sell - Constructing A Protective Fence Around Transformational Technology



The basic course fee of $1095 (or discounted amount; see Registration Form) includes a book of slides in electronic form on a USB stick, luncheon, and coffee breaks mid-morning and mid-afternoon. Discounts for full-time students are also available (see Registration Form).

Registration Form


The course venue is the Corinthian Room at the Holiday Inn Rochester Downtown, 70 State Street, Rochester, NY 14614, USA.

Directions & Map

© 2017 Particles Conference
tel 1-585-413-8264; fax 1-585-482-7795