Summer Patent Seminar

Registration Tentatively Opens Spring 2022

More information to follow

Who Should Attend?

  • In-house counsel, technical advisors, IP coordinators, paralegals, researchers and research managers looking for a comprehensive overview of U.S. patent prosecution
  • Patent attorneys and agents from abroad who are interested in developing a thorough understanding of U.S. patent practice

For almost 40 years, BSKB has been providing participants of our summer seminar with a comprehensive overview of U.S. patent law. The Summer Patent Seminar (SPS) focuses primarily on the practical problems encountered in obtaining valid and enforceable U.S. patents, as well as enforcement of patent rights after grant. The seminar encompasses lectures provided by experienced practitioners, as well as a series of workshops which provide participants with a chance to learn about patent issues in a hands-on setting.

The SPS can also be taken in conjunction with our Post Grant Bootcamp, an intensive training program on post grant issues.

General Information

Lectures are held at the Falls Church, Virginia offices of BSKB, in the metropolitan Washington, DC area. Classes generally run from 9:30am to 4:00pm daily. Detailed class schedules will be issued prior to the start of the seminar. Planned social activities give participants the chance to interact with other participants. These activities include an opening “getting to know you” reception, a two day trip outside of the Washington, DC area and a closing banquet, among others.

Registration due dates are TBD. The fee for the 2022 Summer Patent Seminar is $3,750. Payment is accepted in the form of wire transfer or check. If participant chooses to pay using a non-US credit card there will be a $300 transaction fee added to final bill. Seminar fee includes the lecture materials, digital text book, out-of-town trip, and most social events (an additional fee may be required for accompanying guests to attend certain social events). BSKB has arranged a group rate for participants at a hotel within walking distance of our offices. Upon registering for the seminar, you will receive further information on housing options.

Participants of the SPS who wish to participate in the Post Grant Bootcamp (PGB) after the SPS are welcome to do so, however, separate registration must be completed for the PGB. Please visit the PGB page for more information and to register.

Please contact BSKB with any questions.

Topics Covered

Filing and Prosecuting Patent Applications Strategies, formal requirements and timelines for filing and prosecuting patent applications in the U.S. Patent and Trademark Office (USPTO). Patent Term Rules for calculating patent term and ways to extend patent terms, including Patent Term Adjustments (PTAs) and Patent Term Extensions (PTEs). Statutory Subject Matter The various types of inventions that can and cannot be protected by United States patents, with an introduction to issues unique to computer, Internet, business method, biotechnology, design and plant patents. Prior Art and Obviousness Detailed discussion of prior art under the various sections of 35 U.S.C. § 102, as well as the types of prior art that can be used in making obviousness rejections. Practical suggestions will be given concerning how to overcome prior art rejections. Duty of Disclosure The duty of disclosure requirements and consequences of failing to comply with this duty. Practical suggestions will be given and detailed procedural requirements will be explained.

Benefit of Earlier Filed Applications/Continuing Patent Application Filing Strategies Discussion of use of foreign, U.S. provisional, PCT, continuation, divisional and Continuation-In-Part (CIP) applications. Post Grant Patent Procedures Discussion of strategies used by patent owners and competitors to strengthen, modify or attack granted patents in proceedings before the USPTO. These proceedings include ex parte reexamination, reissue patent applications, post-grant review, inter partes review and supplemental examination, as well as other useful proceedings and strategies. Literal Patent Claim Scope Interpretation and Infringement Examination of the tools used to interpret the literal scope of a patent claim based on the most relevant U.S. court decisions. Addresses claim interpretation and literal infringement and gives special consideration to “product-by-process” and “means-plus-function” claim language.

Doctrine of Equivalents and Prosecution History Estoppel Analysis of the “doctrine of equivalents” under U.S. case law, including its potential benefit to patent claim scope. Includes discussion of limitations on this doctrine, including “prosecution history estoppel” and the “all elements rule.” Negotiation Strategies A hands-on workshop, featuring teams arguing opposing hypothetical positions, allows participants to practice and improve their negotiating skills. Litigation Issues Examination of various strategies involved in litigation before a U.S. court from the perspective of both a patent owner and competitor, including a hands-on workshop. Pre-litigation strategies, such as sending or responding to a “warning letter” and “discovery,” trial procedures and remedies, such as infringement damages and injunctions, are addressed.