Everything Patent Practitioners Need to Know


You’ve passed the patent bar exam. Now what? We have heard that question too many times to count over the years as we have collectively spent over 50 years teaching patent bar review courses. With so many firms cutting back on, or eliminating training, and experience being necessary to get a job, we decided to create this Patent Practitioner Training 101, to bridge the gap for those new to the industry, and to offer a training solution to those firms in need of a ready-made program.

As experience patent practitioners know, and those new to the industry soon realize, having a license to practice is just the beginning. There are numerous skills to be learned, from how to interact with clients, execute written agreements, prepare applications and respond to patent examiners. Knowing the rules is one thing, knowing how to do it in real life is quite another thing all together.

Patent Practitioner Training 101 will provide all the tools necessary for a new patent practitioner to hit the ground running. We address everything that a practitioner may need to do up to an appeal at the United States Patent and Trademark Office, including: obtaining clients, initial client intake, client agreements, handling money, opinion letters, patent searching, opinion letters, drafting patent applications, filing patent applications, responding to a restriction requirement, preliminary amendments, reporting office actions to a client, conducting examiner interviews, filing an amendment and response, and options for keeping a case alive after a final rejection.

At the end of this course students will have a strong grasp on the basics of day to day patent practice, and a catalogue of examples and templates to draw upon for a variety of the most common and likely occurrences in the life of a patent practitioner.

This course is designed for those who have already passed the patent bar exam in the U.S. and will assume a level of knowledge commensurate with having passed the patent bar exam. While exceptions may be made in certain cases, familiarity with U.S. patent law and rules of practices is a prerequisite.

Patent Practitioner Training 101 is ideal for those patent practitioners with less than two years of experience, or law students entering a clerkship or internship between their second and third year of law school. It can also be used by firms to train incoming associates, patent agents or technical advisors.

Things Every Practitioner Should Know: (1) How to write a patent application; (2) Malpractice Insurance; (3) Finding clients; (4) Networking: (5) Overflow Work; (6) Reading patent files; (7) Patent searching; (8) Client trust accounts and accepting a retainer; and (9) Client agreements.

Client Intake: (1) Initial communications with potential clients; (2) Confidentiality owed to potential clients; (3) Conflict checks; (4) Initial discussions about the invention and advice about patents; (5) Knowing your limitations (legal and technical); (6) Managing expectations; (7) Engagement letters.

Evaluating a Patent Search: (1) Reviewing lunch assignment #1 and comparing student results to a professional search result; (2) Pros/cons of using Google and Free Patents Online for patent searches; (3) How to work with a professional patent search firm; (4) Reviewing a professional patent search report; (5) Using Public PAIR to help formulate your opinion.

Writing a patentability opinion letter: (1) Defining the invention searched. (2) How detailed will you be? (3) What advise will you give? (4) Will you every say absolutely no? (5) Are there insights you can provide based on the search done? (6) Is the project now complete? (7) Quoting further work.

A Prelude to Writing the Application: (1) The representation agreement and terms of payment; (2) Importance of filing a provisional patent application in a first to file system; (3) Scheduling work and informing the client; (4) Working with the patent illustrator; (5) A prelude to patent claim drafting.

The law: 35 U.S.C. 101, 102, 103 and 112. Special emphasis will be placed on cases and concepts you will need to know when drafting and prosecuting patent applications.

Claim drafting: Claim drafting techniques for a variety of different types of claims including device claims, method claims, means plus function claims and systems claims.

Specification Drafting: (1) Defining the invention completely with alternatives and variations and with particular care to identify the improvements that will contribute to patentability; (2) Avoiding common mistakes that will unnecessarily limit the scope of protection.

Filing the patent application: (1) EFS Basics: (2) Application Data Sheet (ADS); (3) Declarations; (4) Making a priority claim; (5) Filing an Information Disclosure Statement (IDS); (6) Fixing common mistakes at the time of filing; (7) Filing a Preliminary Amendment; and (7) Responding to a Restriction.

Office Actions: (1) Reporting an Office Action to a client; (2) Responding to the First Action on the Merits; (3) Using an interview with an examiner prior to responding to the first Office Action; (4) Amendment Writing; and (5) Examiner Interviews (generally).

Everything that can happen during prosecution (and why): Continuations, Divisionals, CIP, RCE, CPA, Affidavits, Suspension of Action, Requests for Information, Abandonment/Revival, Advancing a case out of order, General Authorization, Deposit Account, Withdrawal, Power of Attorney, Ombudsman.

After Final Rejection: (1) After Final Practice; (2) Filing a Notice of Appeal; (3) Pre-Appeal Brief Review. Post Issuance: (1) Maintenance Fees; (2) Reexamination; (3) Reissue; (4) PTAB challenges; (5) Enforcement; and (6) Licensing.

Putting it All Together: A walk through several applications and file histories to reinforce lessons and continue to provide working examples that can be drawn upon post-course in day-to-day practice.

We will offer live courses at 700 12th Street NW, Suite 700, Washington, DC. This facility is conveniently located directly across the street from Metro Center, making it easily accessible by public transportation. Continental breakfast and afternoon refreshments will be provided each day. Students will provide their own lunch.

In our live on location courses we will cover 6 hours of material each day, with a Q&A period to end each day. There will be homework, and lunch assignments. Those familiar with the patent bar course John and Gene teach will already know the drill. This will be an immersion course where students will be busy in class from 8:30am to 5:30pm each day, and with homework on the first two nights.

We will also offer a LIVE distance course. These live, online courses are not pre-recorded. Either John, Gene, or both will be live via our interface to conduct the class and answer questions during the Q&A period.

Each distance course will meet for a total of 6 days (Tuesday, Wednesday & Thursday for two weeks), and will cover each of the same 18 segment hours covered in the live course. Rather than breaking the day down into a morning segment and afternoon segment, each day of the distance course will cover 3 hours of substantive instruction, which will be followed by a 30 minute Q&A period. There will, of course, be homework.

 


Payment Option:  PayPal offers a 6 month No Interest payment option.  Please click the PayPal Credit image to learn more and apply.  Once you have set up your PayPal account, and have gotten PayPal Credit approval, please email Renee a [email protected] and we will send you an invoice for the course of your choice via PayPal.

Gene Quinn

Gene Quinn

is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

John White

is a Director at Soryn IP, a patent advisory and finance firm that, among a host of patent-centric offerings, assists parties in identifying and acquiring patent portfolios that satisfy strategic and business needs. Mr. White is also a US patent attorney and a principal lecturer/author of the PLI Patent Bar Review Course. Since John began teaching patent bar review courses in 1995, he has personally taught nearly 50% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in litigations and is regarded as a leading authority on patent practice and procedure. For more information please see his profile page.

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