Workshop B

January 24, 2014 9:00am

Interactive Working Group Session: A Hypothetical Invention Being Patented under the AIA

Paolo Gerli
European Patent Attorney
M. Zardi & Co. S.A.

Thomas L. Irving
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)

Donna M. Meuth
Associate General Counsel, Intellectual Property
Eisai Inc. (Andover, MA)

Clark G. Sullivan
Troutman Sanders

In this highly interactive post-conference session, expert patent attorneys will use a hypothetical scenario to demonstrate the ways in which the AIA is impacting patent prosecution. Our faculty of expert practitioners will present attendees with a model company developing a novel product, and walk them through all of the steps of patenting the invention, highlighting the steps along the way that will be impacted by the AIA. In addition, the speakers will compare and contrast the U.S. system with its international counterparts. Framing each step as a fork in the road with what will sometimes be a difficult and highly consequential choice, the decision-making process will be open for discussion, allowing attendees to grasp precisely how the AIA will impact:

• Whether to file at all in light of prior user rights
• Where to file–advantages and disadvantages to U.S. and international venues
• Examination choices, whether it be prioritized, micro-entity, under the PPH, etc.
• Claim drafting in light of changes to prior art, pre-issuance challenge, and more.
• Crafting a written description with enabling disclosure
• Choice in filing date in light of the March 16, 2013 switch
• Ensuring that all claims have priority
• Anticipating challenges post-grant