Recent Changes in Patent Prosecution Practice

Foley Partner, Edward Polk, Jr. will be speaking on September 16, 2010 at the Practicing Law Institute (PLI) – Developments in Pharmaceutical and Biotech Patent Law 2010. Mr. Polk will be discussing “Recent Changes in Patent Prosecution Practice”. His discussion will include the following points:

• Changes to the USPTO count system
  
  
  
  • What are the implications of changes to the USPTO count system for biotech & pharma prosecutors?
  
  
  • How could the changes impact RCE practice?


• Changes to BPAI appeal practice
  
  
  
  • How will PTO’s changes streamline BPAI appeal practice?
  
  
  • How will changes impact appeals from TC 1600?


• Proposed changes to missing parts practice to allow for 12 month extension for provisional patent applications
  
  
  
  • Do the proposed changes really provide a 12-month extension to the 12-month provisional application period?
  
  
  • Can the proposed changes be used to extend patent term for pharmaceutical applications?


• In re Tanaka (BPAI)
  
  
  
  • Is the addition of narrower claims a valid reason for filing a reissue if applicant does not also allege that one or more of the broader patent claims is overly broad?
  
  
  • Can reissue applicant add specific species compound claims without also alleging broader genus claims are invalid?

For more information, please visit the Practicing Law Institute Web site.