U.S. Patent Formalities
The Guide to the Formal Requirements
- Introduction to U.S. Patent System, USPTO and the AIA
- Requirements and Formal Documents for a U.S. Patent Application
- Prosecuting a U.S. Patent Application (Objections/Rejections, Timing, RCE practice and Appeals)
- Post-Issuance of a Granted U.S. Patent
- Challenging U.S. Patents
Aims and objectivesThis course will provide a detailed guidance to the formal requirements of U.S. patent prosecution. The instructors will describe the necessary papers, forms and fees required for U.S. patent practice, as well as the best practices for meeting those requirements. It aims to give a practical, in-depth understanding of the U.S. Patent System.
Participants will have the opportunity to raise questions on all aspects of the procedures. Commonly arising problems and practical solutions will be discussed.
This course is also tailored to European practitioners. It will thus highlight the important differences between U.S. and European formalities and provide guidance on how to effectively meet the U.S. formalities when prosecuting counterpart applications in Europe and elsewhere.
2nd day: 09:00 - 16:00 h
- Laws, rules and USPTO guidelines
- USPTO Website and Resources
- Global Dossier
- Types of U.S. Patent Applications
- Parts of a U.S. Patent Application and Required Filing Forms
- Applicant and Assignment
- Example Filing of a Sample U.S. Patent Application (National Phase)
- Sample Application, Forms and Amendments
- e-Filing with Private PAIR
- EPAS Assignment Portal
- Differences for Other Application Types
- USPTO Papers Issued after Filing
- Accelerated Examination Possibilities
- Information Disclosure Statements (IDS)
- Office Actions
- Restriction Requirements
- Types of Rejections, Requirements for Patentability
- Examiner Interviews and Ombudsman
- After-final Procedure
- Request for Continued Examination (RCE)
- Allowance and Issuance
- Term and PTA
- Payment of Maintenance Fees
- Reissue and Certificates of Correction
- Patent Marking
- 3rd Party Submissions
- Inter Partes Review (IPR); Post-Grant Review (PGR)
- Covered Business Methods (CBM)
Mr. Signor focuses his practice on serving European clients in all aspects of U.S. intellectual property law. His patent prosecution practice has a particular emphasis in the mechanical, electrical and computer fields. In the mechanical field, areas of expertise include manufacturing, rapid prototyping, robotics, product finishing, chemical plant designs, infrared technologies, optics, consumer products, appliances, measurement devices, automotive and aircrafts. In the electrical field, areas of expertise include turbines, power distribution systems, electrical components and imaging. In the computer field, areas of expertise include cloud computing, software defined networking, blockchains, network security, machine learning and artificial intelligence. He is also experienced in drafting opinions on patent validity, patentability and the freedom to operate, drafting petitions for reexamination and Inter Partes Review, assisting in patent infringement litigation and counseling with respect to litigation-related matters, performing due diligence and negotiating and drafting license and joint development agreements.
Kristen Zuk holds a B.A. from the University of Virginia and has over seven years of administrative experience. As a Legal Assistant she is engaged in all aspects of U.S. patent prosecution, including preparing and filing all formal documents at the U.S. Patent and Trademark Office. She regularly works closely with attorneys and clients to ensure timely satisfaction of all requirements from application filing to patent issuance. She speaks English and German.
NL 1054 Amsterdam
Telefon: +31 20 6075555
Fax: +31 20 60075511
Delegates will receive a course material folder containing comprehensive documentation provided by the speakers, which will be a valuable source of reference for the future.
'It was much more in-depth as I expected, which was realy great! Great speaker, great masterclass and it was nice to meet colleagues from other conrtries and companies!' (formalities officer)
'The fact that it was a small group allowed a good exchange of experience within the subject; very good material, good speaker, time for questions and discussions!' (patent administrator)
'This course gives a good overview of the procedures, good examples from practice, hosted by a very pleasant speaker!' (formalies officer)
'Good group of participants, good interaction, very good presented by Mr Molnia!' (IP Admin)
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