Patent Prosecution
Friday, September 7, 2007
Loyola Law School Campus, 919 Albany Street, Los Angeles, California
This program will focus on some of the most troublesome issues facing patent attorneys today resulting from continuing changes in the governing law and regulations. Topics of particular interest include evolving PTO practice regarding claim construction, re-examination, utility rejections, appeals, and continuation practice, as well as the impact of pending Supreme Court and Federal Circuit decisions regarding obviousness and the Doctrine of Equivalents on claim preparation and prosecution.
New Standards for Obviousness and Fraud on the PTO - The Practical Implications of KSR and McKesson
The recent Supreme Court’s decision KSR International v. Teleflex and the Federal Circuit’s decision in McKesson Information Solutions v. Bridge Medical have broad-ranging implications to both the practice of patent prosecution and the efficacy of patents issued by the PTO.
The first half of this IP Special Focus Event will focus on US and foreign obviousness standards, including KSR-induced United States PTO practice changes, and obviousness in the EPO.
Mr. John ("Jack") D. McConaghy, of the Los Angeles Office of Connolly Bove Lodge & Hutz LLP, will speak on KSR’s vision of obviousness, how that vision will change the PTO’s standards in rejecting and allowing claims, and how patent practitioners can best deal with those standards. Mr. Alexander Schlee, of Schlee IP International, will speak on obviousness, or “lack of inventive step” in the EPO, and strategies for dealing with a lack of inventive step rejection in the EPO.
The second half of the program will be a panel discussion about the McKesson decision and its implications for patent prosecutors attempting to comply with Rule 56.
Messrs. Mark K. Dickson, of the San Francisco Office of Winston & Strawn LLP, and Jose L. Patiño, of the San Diego Office of Morrison & Foerster LLP, represented McKesson and Bridge Medical respectively. They will discuss the McKesson case itself. Mr. Stefan J. Kirchanski, Ph.D., from the Century Office of Venable LLP, is an Adjunct Associate Professor of Law at Southwestern Law School. He will discuss the impact of the McKesson case on patent prosecution.