USPTO Director Jon Dudas and IP Professionals Discuss New USPTO Continuations and Claims Rules and Their Practical Implications

The Patent Nation Conference series features complimentary programs for in-house counsel and business executives to exchange insights on the evolving patent landscape. The United States Patent and Trademark Office (USPTO) has just officially published its new claims and continuations rules, which are aimed at improving patent quality and efficiency. During this session, participants heard the background and implications of the new rules from Jon W. Dudas – Under Secretary of Commerce for Intellectual Property, and Director of the USPTO – along with leading practitioners in the field.

Additionally, a panel discussion will focus on:

• A checklist of steps to take during the 60-day window before the final rules are effective
  
• Scenarios that would justify extra continuations under the final rules
  
• The number of continuations filed as a matter of right
  
• The “bonus” continuation for transition cases as well as the definition of a “transition” case
  
• The importance of “serial divisionals” particularly applicable to companies within the biotechnology, pharmaceutical, and nanotechnology industries

Moderator

• Philip G. Kiko, Of Counsel, Government & Public Affairs Practice

Guest Speakers

• Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director, USPTO
  
• Robert Bahr, Senior Patent Counsel, Office of the Deputy Commissioner for Patent Examination Policy, USPTO

Foley Panelists

• Courtenay C. Brinckerhoff, Partner, Biotechnology & Pharmaceutical Practice
  
• Stephen P. Fox, Former Vice President and Deputy General Counsel for Intellectual Property, Hewlett-Packard Company
  
• Stephen B. Maebius, Partner and Co-Chair, Life Sciences Industry Team