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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, January 16, 2024

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent counsel on the various USPTO options for responding after the final rejection of a patent application. The panel will review the basics of each option and focus on strategic considerations and using different options. The panel will also update participants on the ongoing pilot program, review statistics, and discuss their experiences.

Faculty

Mandy J. Song
Founding and Managing Partner
Bayes, PLLC

Dr. Song, Ph.D. brings more than a decade’s experience in patent practice, including patent prosecution, client counseling, patent portfolio management & transactions, patent litigation in U.S. federal district courts and Section 337 investigations at the U.S. International Trade Commission (ITC), and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has significant experience in a wide range of electrical, computer, and biomedical technologies. 

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Elizabeth A. Doherty
Partner
McNeill Baur LLP

Dr. Doherty has spent the past 20 years assisting clients in the life sciences with a wide range of U.S. patent law issues. Her current work focuses on helping clients develop patent strategies for their research projects, conducting due diligence and freedom to operate analyses, and preparing legal opinions, as well as drafting new patent applications and prosecuting U.S. patent application portfolios. Dr. Doherty has also prepared IPR petitions and assisted a patent owner successfully defend all of its patent claims in an inter partes reexamination before the US Patent and Trademark Office. Coordinating patent and regulatory strategies for new drugs and biologics is also an important aspect of her work. Dr. Doherty is a frequent author and lecturer on patent law topics.

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Description

As part of the Enhanced Patent Quality Initiative and related workflow optimizations, the USPTO has greatly expanded the after-final opportunities for patent applicants. Traditionally, options at the close of patent prosecution were only pre-appeal/appeal or request for continued examination. There are now a number of options to resolve disputes far faster and cost-effectively.

The USPTO launched a new Fast-Track Appeals Pilot program in July 2020, which has been extended several times and ran until July 2, 2023. The USPTO has also extended after-final programs such as the After-Final Consideration Pilot 2.0 program until Sept. 30, 2024. Other USPTO programs encourage direct collaboration between applicants and examiners to increase efficiencies in patent prosecution. Given the array of after-final options now available, it is more important than ever for counsel to understand each option's unique benefits and tactical implications.

Listen as our authoritative panel of patent attorneys discusses the strategic considerations behind each of these options. The panel will briefly explain each option, discuss scenario-based concerns, and explain the relative benefits of the different options.

Outline

  1. The value proposition of various after-final options
    1. Options if you do not wish to amend: request for reconsideration, pre-appeal, appeal
    2. Options that allow amendment: amendment after final, AFCP, RCE
  2. The pilot programs and how effective they are
    1. Fast-Track Appeals Pilot Program
    2. After Final Consideration Pilot 2.0 (AFCP 2.0)
  3. Statistics
  4. Best practices

Benefits

The panel will review these and other key issues:

  • What options are available to patent counsel upon receiving a final rejection of a patent application?
  • What should patent counsel consider when determining if--and which--PTO option to use in response to a final rejection?
  • How can patent counsel and applicants leverage the PTO options for compact patent prosecution?