Patent Prosecution Tool Kit

Patent prosecution continues to evolve as rapidly as the innovations that patents protect. The America Invents Act of 2011 (AIA) ushered in the most significant changes to the U.S. patent system in over 50 years, and since then the courts are continuing to shape how the AIA should be interpreted. Recent court decisions on patent subject matter eligibility and biosimilar drug development have added further complexity to the landscape.

Indeed, preparing and prosecuting a quality patent application requires skill on many levels: a comprehensive technical understanding of the invention, a grasp of how it will be used in the business world, knowledge of how the U.S. Patent and Trademark Office (USPTO) examines applications, foresight to how courts interpret patent claims, awareness of the strategies used to avoid or design around a patent, and anticipation of possible enforcement efforts and invalidity challenges.

For more than four decades, Sterne Kessler has been preparing and prosecuting patent applications. We draft and prosecute utility, design and plant patents for companies with extensive, active patent portfolios, as well as smaller start-up companies that rely on the patent system to obtain funding and head off competition. We also apply our in-depth knowledge of the laws and workings of the USPTO to advise on complex patent issues such as strategic patent portfolio planning, freedom to operate and patentability assessment, patent infringement and invalidity analysis, and adversarial patent matters. In recent years, we have leveraged our leadership in post grant proceedings at the Patent Trial and Appeal Board to obtain strong and defensible patents for our clients.

This Tool Kit was created as a desk reference to highlight just some of the aspects of patent prosecution that Sterne Kessler’s professionals are practicing day in and day out. Please let us know if you need more detailed information, and we will be happy to assist you.

Table of Contents

• Capturing After-Discovered Embodiments in Biotech Patents By Careful Prosecution
• Patenting The Product Label
• Implications of the BPCIA on the IP Strategies of Brand Companies and Biosimilar Developers
• Summary of Subject Matter Eligibility: Biotech/Pharma Inventions
• Update on Patent Subject Matter Eligibility and Abstract Ideas
• Information Disclosure: Avoiding Common Pitfalls
• Fast Track Patent Examination
• The Changing Face of Non-Obviousness
• Invoking an AIA Exception to Prior Art, 1.130 Declarations
• 1.132 Declarations For Traversing Rejections
• Obviousness-Type Double Patenting
• Patent Term Adjustment
• Patent Term Extension
• Federally Funded Inventions and Compliance with the Bayh-Dole Act
• When to Obtain Foreign Filing and Export Licenses
• Global Design Patent Guide
• Medical Device Considerations