September 1-30, 2020

Preparing and Prosecuting Patents that Hold up to Challenge

Preparing and Prosecuting Patents that Hold up to Challenge

Register FreePatents have been and continue to be an important asset for innovators. Unfortunately, however, a patent is not an asset that typically possesses flexibility and adaptability. Given the evolution of patent law and changes to practice and procedure that make it easier to challenge validity of issued patents, gone are the days of cheap patents with thin disclosures.

Obtaining a patent that will hold up to challenge when the patent owner seeks to use that patent, whether through litigation enforcement or a licensing program, requires thoughtful consideration from the earliest stages. While it remains necessary to draft patent applications carefully, and cautiously, so as to not run afoul of KSR v. Teleflex, courts seem increasingly skeptical of patents and patent applications that do not explain what the innovation really is, and why it is an improvement.

What does this changing landscape mean for patent application drafting best practices? What tips and tricks should be employed in order to provide a specification that has maximal opportunity for success during examination?

This session will discuss: (1) Pros and cons of having a Background (101 vs. 103); (2) Carefully considering claim terms and infringers; (3) Fixing problems before and after allowance; (4) When should you be willing to take a case to appeal? (5) Portfolio building techniques: Identifying valuable claims to add.

Related References:

  1. A Primer on Indefiniteness and Means Plus Function (
  2. A Software Patent History: The Algorithm Cases (
  3. Software Patent Drafting Lessons from the Key Lighthouse Cases (
  4. How to Effectively Draft the Background Section in Compliance with Both USPTO and EPO Practice (

About MCLE Credit

MCLE has been approved in Texas (1 hrs), Oklahoma (1 hrs), Arkansas (1 hrs) and Missouri (1.2 hrs). Application for MCLE pending in Virginia.

States including California, FloridaIllinois, HawaiiNew JerseyNew York, North Dakota and Wisconsin accept credits when a course has been approved by another MCLE jurisdiction, as has occurred here.

States such as Arizona and New Hampshire do not approve courses and expect lawyers to independently verify courses meet MCLE requirements.

Other states require attending attorneys to complete a form requesting credit. Some states, such as AlabamaGeorgia, LouisianaMinnesota, Ohio, PennsylvaniaTennessee and Washington require attorneys to submit an application for approval of courses taken out of state. These states sometimes require the application to be submitted immediately following the completion of the CLE activity, please check the requirements in your state.