American Conference Institute’s 5th Advanced Summit on

Medical Device Patents

Comprehensive and Practical Patent Prosecution and Litigation Strategies for an Evolving IP Landscape

Wednesday, March 04 to Thursday, March 05, 2015
InterContinental Chicago, Chicago, IL

Workshop: Wednesday, Mar 04, 2015

Patent Prosecution Master Class — Best Practices for Drafting Claims and Prosecuting Medical Device Patents in the Post-AIA Landscape
​9:00 am – 12:00 pm (Registration & Continental Breakfast begins at 8:30 am)
  • Tom Barrett
    Supervisory Patent Examiner
    U.S. Patent and Trademark Office
  • Patricia Bianco
    Supervisory Patent Examiner
    U.S. Patent and Trademark Office
  • Paul Lee
    Patent Counsel
    DexCom Inc.
  • David J. Simonelli
    Reising Ethington, PC

In this hands-on, interactive workshop, current PTO examiners and leading patent prosecution counsel will guide you through the new PTO landscape and share best practices on securing and maintaining patent prosecution cost-effectively. Learn successful techniques, identify practice pitfalls, and streamline the process by developing an understanding of how the new PTO operates. Topics for discussion include:

  • Analyzing how the AIA has affected and will continue to affect medical device patent practice
    • Exploring how the change from “first to invent” to “first to file” has impacted medical device patent practice
    • Adapting to the expansion of what constitutes “prior art”
    • Understanding the use of supplemental examination, ex parte reexamination, or reissue to cure defects before a patent is challenged
  • Speaking the language of the PTO — advanced techniques for claim drafting and patent examiner interviews
    • Delineating the meaning of claim terms in the specification
    • Balancing claiming broadly with the risk of validity challenges down the line
    • Claiming through functional language (update on recent cases)
    • Maximizing your opportunity to explain the science behind your device at the interview
    • Understanding the examiner’s perspective
    • Incorporating examiner interviews into your practice
    • Crafting an effective response to an inquiry or rejection
  • IDS practice — how the PTO handles supplemental examination of prior art and third party submissions

Workshop: Friday, Mar 06, 2015

Act Locally, Think Globally — Being Mindful of International Forums While Prosecuting Patents in the United States or Considering How to Bring an Infringement Challenge
​9:00 am – 12:00 pm (Registration & Continental Breakfast begins at 8:30 am)
  • Louis C. Cullman
    K&L Gates
  • Kieran Power
    Griffith Hack
  • Sinan Utku
    Special Counsel
    Covington & Burling LLP
  • Michael J. Wise
    Perkins Coie LLP

Disclosures made while prosecuting a patent in the United States could have wide ranging consequences when attempting to prosecute the same patent in a foreign jurisdiction. In addition, foreign jurisdictions or the International Trade Commission in the United States provide alternative venues to protect your company from infringement. This interactive workshop will provide an overview of major issues abroad, including:

Established Markets

  • Opposition practice in Europe: making the case, defending it, and ensuring consistency with your U.S. filings
  • Understanding how American standards for obviousness, anticipation, and written description carry over to the EPO and the Courts
  • Choosing the right words for your claims and specifications as the EPO seemingly takes a more literal look at patents under select basis: withstanding challenges and maintaining meaningful claim scope
  • Coordinating freedom-to-operate globally
  • Claim drafting strategies to ensure patentability of device diagnostic patents abroad
  • Preparing for the future
    • How has the establishment of the Unitary Patent Courts affect device IP strategies?
    • What are the pros and cons of obtaining a unitary patent?

Emerging Markets

  • Preparing for and implementing a patent strategy for emerging markets as there is a huge paradigm shift towards increased healthfulness and well-being: Where are the medical device patents being filed?
  • Finding blue water (new markets, new industry) in a crowded space
  • Cheat sheet on filing internationally: what types of medical device claims are allowed in key BRIC jurisdictions?
    • Reviewing the standards for patentability, filing requirements, claim construction, and obviousness or inventive step in major emerging markets
    • Addressing foreign inventor payment laws and resolving employee-inventor payment issues in China and Russia
    • What is the litigation climate?
  • Discussing the benefits of Commonwealth nations such as Canada and Australia
  • Summarizing key advantages and disadvantages to pursuing patents in India, Singapore, and Brazil


  • Utilizing the ITC as a forum for litigating international patent disputes
  • Knowing when and how to employ the new, accelerated procedures for determining threshold questions, such as the domestic industry guidelines
  • Strategic discussion on obtaining an exclusion order
  • Exploring the public interest standard and its effect