What Certified Patent Strategists Will Learn

Our curriculum goes far beyond imparting the rudimentary elements of patent prosecution, such as fees to be paid, forms to be completed and deadlines to be met. Rather the Institute for Patent Prosecution is dedicated to optimizing the interactions with patent examiners during prosecution so as to achieve the highest patent quality as expeditiously as is prudent.

Our instructors provide detailed analysis and insightful nuances gleaned over dozens of years of experience prosecuting patents with respect to issues such as:

  • How patent examination and infringement litigation are related
  • How the US Patent Office is organized
  • Understanding what motivates US Patent Examiners
  • Reading a US Office Action
  • Critical review of a US Office Action
  • Double patenting and restriction practice
  • Patentable subject matter in US practice
  • Novelty and obviousness in US practice
  • Preparing responses to Office Actions
  • Reviewing cited art
  • Reviewing drafts from outside counsel
  • Arguing without amending
  • Determining appropriateness of examiner interviews
  • Devising examiner interview strategy
  • Using the Manual of Patent Examination Practice (MPEP) to your advantage
  • Determining when to make concessions to examiners
  • Deciding when to request intervention by supervisory examiners
  • Appeal and petition: the role of each
  • Deciding when to appeal
  • Deciding when to petition