Patent Practice Training: Intro to Patent Prosecution


Having a license to practice is just the beginning. Let John White and Gene Quinn teach you how to actually practice!

On Demand

The current version of the On Demand course was recorded live during the May 2020 live course. It was the same 24 hours of instruction received by live students. On Demand students also received access to the eight (8) recorded Q&A tutorial sessions that ended each night of our live course, as well as extras from our January/February 2019 live recorded class. This brings the total of original On-Demand training to over 30 hours!

On Demand students also receive invitations to 12 monthly mentoring sessions (described more below), as well as a post course with over 10 additional hours of recordings curated from our webinar archive.

Live Courses

Our live and online model is taught over three weeks and is highly interactive. Students attend each class via an online live streaming platform and are able to submit questions for John and Gene to answer.

Beginning in 2020, our live course meets for three (3) hours over eight (8) days, for a total of 24 hours of instruction. At the conclusion of each day there is an optional Tutorial, which past students have indicated is one of the most valuable parts of the course. This Q&A wraps the day and allows us to get to questions we were not able to weave into our presentation. Students will also receive invitations to 12 hours of mentoring sessions (held monthly and described below).

Upcoming 2020 Courses

On Demand

$1995*

SYLLABUS

* Included in the cost of the course is the course materials in electronic form.  Should you also wish to purchase a hard copy of the book the cost of the course is $2,245.

Comprehensive, Interactive Training & Mentoring

You’ve passed the patent bar exam. Now what? Having a license to practice is just the beginning. What you need is a bridge between passing the patent bar and representing clients.

Increasingly firms are not providing training, and many firms are not even hiring unless practitioners have experience. That means new practitioners are often left to their own devices as they seek experience in the first few years after passing the patent bar examination.

This is why Gene Quinn and John White designed Patent Practice Training. This course will provide all the tools necessary to hit the ground running. At the end of this course students should have a strong grasp on the day to day basics of patent practice, and a catalogue of examples and templates to draw upon for a variety of the most common and likely occurrences that real life will throw at a patent practitioner.

Beginning in 2019, students who have taken the course within the last year will be invited to monthly mentoring sessions with John and Gene. These additional sessions will follow the same model as our tutorials, which will be open Q&A forums where those present can ask non-confidential questions about practice, the law, the MPEP, or whatever. Each of our tutorial sessions included in the course, as well as these additional mentoring sessions are an attempt to mimic the way mentoring was typically done when we were younger attorneys. Senior attorneys making themselves available to answer questions, offer advice, and give feedback.

Gene Quinn

John White

John White

This course is primarily designed for those who have already passed the U.S. patent bar exam, and we will assume a level of knowledge commensurate with having passed the exam. This course is ideal for those patent practitioners with less than three years of experience prosecuting patent applications, professionals needing procedural knowledge on the day to day process for filing and obtaining patents, and law students having already taken patent courses and having had at least some clinical experience. Exceptions will be made for professionals having familiarity with U.S. patent law and rules of practice on a case-by-case basis.

Included with this Course

Included with this course, all students will also get:

Topics Covered

Client Intake: (1) Initial communications with potential clients; (2) Confidentiality owed to clients and prospective clients; (3) Conflict checks; (4) Initial discussions about the invention and advice about patents; (5) Knowing your limitations (legal and technical); (6) Managing expectations; (7) Representation agreements; (8) Client trust accounts and accepting a retainer; and (9) Ending a representation relationship.

Evaluating a Patent Search: (1) Patent search vs. Google search vs. Product search; (2) Pros/cons of using online sources for patent searching; (3) Preliminary patent searches; (4) How to work with a professional patent search firm; (5) Reviewing a professional patent search report; (6) Using Public PAIR to help refine and formulate your opinion.

Patentability opinion letters: (1) Defining the invention searched. (2) How detailed will you be? (3) What advise will you give? (4) Will you every say no? (5) Insights you can provide based on the search done? (6) Is the project now complete? (7) Quoting future work.

A Prelude to Writing the Application: (1) Identifying the invention, as well as potential variations, alternatives and work-arounds; (2) Importance of filing a provisional patent application in a first to file system; (3) Scheduling work and informing the client; and (4) Working with patent illustrators.

Claim Drafting 101: Basic claim drafting techniques for a variety of different types of claims including devices, methods, means plus function and systems claims.

The Detailed Description of the Invention: (1) Hitting the happy medium between specific and nuance while maintaining proper breadth; (2) Breaking down Skeleton Bones (i.e., hip bone connected to the thigh bone); and (3) Working with drawings.

Specification Drafting: (1) Defining the invention completely with alternatives and variations and with particular care to identify the improvements that will contribute to patentability; (2) Not confusing breadth with depth; (3) Avoiding the use of patent profanity without outsmarting yourself; (4) Avoiding common mistakes that will unnecessarily limit the scope of protection; and (5) Describing what matters and not sounding like an infomercial.

Filing Basics: (1) Filing papers with the USPTO; (2) Depositing correspondence; (3) Completeness of the original application; (4) Deposit Accounts; (5) Large Entity vs. Small Entity vs. Micro Entity; (6) Postal service interruptions and emergencies; and (7) EFS-Web Basics.

Getting to Substantive Examination: (1) Application Data Sheet; (2) Oath/Declaration; (3) Making a priority claim; (4) Filing an Information Disclosure Statement (IDS); and (5) Fixing common mistakes at the time of filing; (6) Filing a Preliminary Amendment; and (7) Responding to a Restriction Requirement.

Prosecution Basics: (1) Reviewing an Office Action: (2) Reporting an Office Action to a client; (3) Responding to the First Office Action on the Merits; (4) Using an interview with an examiner prior to responding to the First Office Action; (5) Amendment Writing; and (6) Examiner Interviews.

Application Drafting: An examination of specifications and claims for a variety of different types of inventions, including methods, compounds, devices and software.

The Law: What you need to understand to successfully write and prosecute patent applications: — 35 U.S.C. 101, 102, 103 and 112.

Effectively Responding to Office Actions: (1) Effectively and persuasively arguing 101 & 103 rejections in response to an Office Action; (2) Effectively responding to 102 and 112 rejections; and (3) Learning what to say and how to say it to maximum effect with least consequence.

Amendment & Response (aka Claim Drafting 102): A detailed review of specific inventions (i.e., methods, compounds, devices and software) as they were filed at the patent office and amended throughout examination in order to ultimately achieve a notice of allowance.

Advanced Prosecution Topics:  (1) Can you cause a new examiner to be assigned? (2) Ombudsman; (3) Prioritized Examination (aka Track One); (4) Patent Prosecution Highway; (5) Prosecution history disclaimer vs. Prosecution history estoppel; (6) Carefully considering infringers: Divided infringement; (7) Fixing problems before and after a Notice of Allowance; (8) Patent Law Treaty Reference Filing; (9) Patent Cooperation Treaty; and (10) QPIDS.

One of Everything™: We will walk you through the forms and examples of virtually every type of filing you might need to make in a typical patent prosecution, even pausing to explain some atypical filings such as responses to Ex Parte Quayle, 132 Declarations and filing terminal disclaimers and much more.

Payment Option

PayPal Credit PayPal offers a 6 month, no interest payment option.  Please click the PayPal Credit image to learn more and apply.  Once you have set up your PayPal account, and have gotten PayPal Credit approval, please email PatentPractitioner101@ipwatchdog.com and we will send you an invoice for the course of your choice via PayPal.

 

Testimonials from Former Students

“Hands down, this was the best patent prosecution course I have ever taken.  Not only was this course very informative, it was also very entertaining.  For me, the most enjoyable part of the course was hearing the real life patent prosecution stories and events that these 2 very well-seasoned instructors have experienced over the years.  That was priceless!!  I would highly recommend this course to any new patent professional.  The material alone made this course worth every penny! “

—J Eason, Patent Attorney, San Diego, CA.

“Gene and John’s Patent Practice Training course takes what I found to be an extremely effective learn-by-example and learn-by-doing approach to covering the routine aspects of daily practice – working with inventors, ordering/reviewing patent searches, drafting specifications/claims, and prosecuting applications in front of the USPTO through all stages of the process. Gene and John also offered up invaluable insights (and entertaining, memorable anecdotes) about the general business/economics of patents and being a practitioner as well as about current events and trends in the industry. The mentoring sessions following each lecture and continuing monthly for the first year after the course were the first opportunity I had ever had to “hang out” with experienced attorneys in a low-pressure environment and learn how to think, talk, and act like one myself. This in particular was what really gave me the knowledge and confidence I needed to successfully transition from passing the patent bar (thanks in no small part to their equally excellent patent bar course) to working as an actual practitioner. I cannot thank Gene and John enough for their efforts to bring new practitioners into the fold, and I estimate that taking the course saved me at least two years of flailing around not knowing what to do on my own.”

—Peter Adriano DeBiase, US Patent Agent (Reg. No. 77,431), Las Vegas, NV

“I thoroughly enjoyed this course, not only for the sheer volume and quality of the learning I enjoyed, but also for the personally-focused attention I received, not only from Gene and John, but also from Renée, who ensured the course ran like a well-oiled machine. In their own amiable, relaxed and humorous way, John and Gene walked me through all aspects of practical practice, to client intake, evaluating a patent search, drafting provisional and nonprovisional applications, claim-drafting, and responding to virtually every Office Action imaginable – in all cases, I felt like both had “been there, done that” and knew exactly what they were talking about. More importantly, they were able to get me to understand how to walk-the-walk of a reasonably-seasoned patent attorney, as well – without having to endure the painful missteps and pitfalls associated with experiencing the same either as a solo practitioner or as a “newbie” in a big firm: They covered the gamut of likely practice errors and how to avoid them. Simply put, I can’t say enough good things about the course: It’s money well-spent!

—Jack Stuart, Martensen IP, Colorado Springs, CO

“I got more than my money’s worth. Gene and John’s patent bar course is the gold standard of preparing to pass the patent bar exam. I feel that this course will become the gold standard for moving people from the patent bar into actual practice. The work that we are expected to do can be scary: money is on the line, the job is difficult, and things can rapidly go wrong if things are not done correctly. This course provides a format that demystifies and familiarizes a participant with all of the things that are needed to practice. This removes a great deal of the fear involved. Just as in the patent bar, there is a lot of work that a person will need to do outside of the course, but Gene and John provide the guidance of where to focus that effort. The course book and the live tutorials with Gene and John are alone worth the price of the course. I use my materials daily and will use them for a long time to come.”

Jordan Michael Bauman, PhD, American and Norwegian Patent Agent, Norway

“Gene and John have done for patent practice training what they have done for taking the patent bar exam: they break down the essentials; they provide on-point and clear materials; and they direct you through the meat and bones of patent practice. After taking the course, I now feel I can begin patent practice with the skills and confidence I need (and did not have) after passing the patent bar. The live format, I felt, was invaluable. Unlike static training videos, the live format engages you. Your questions are answered, and you work through the materials as if you were there in-person with them, getting expert advice. I cannot overstate how much more effective I found this format. The materials will be referenced  for many years, and I now look forward to taking these skills out to the greater world of patent practice.”

— Michael M., Colorado

“As a newly minted patent agent, this course is a must have! The course is packed with useful tips and strategies, not to mention an invaluable collection of templates, claim exercises and six months access to the Invent plus Patent software. This is the second course I have taken with John and Gene and simply put, they are the gold standard with respect to patent related education.”

— Chris Cappy, Registered Patent Agent, Reg. # 76204

“I thoroughly enjoy taking this on-line course which covers all areas of patent practicing. One thing impresses me is that the course was not a record, but a live format. Signing in through Go-to-meeting, I joined the video conference with Gene and John. I had their live videos presented on my screen which made me feel like they were sitting in a same classroom with me and talking to me so that I concentrated on the course better. Moreover, there was a Q&A section at the end of every class. Gene and John took the time to answer all participants’ questions that were both related to the course and the issues we met in our real work. Gene and John are not presenters, but true instructors. They are so engaging, have relevant stories to share, and have effective strategies from their extraordinary experiences. Over the duration of the course, I have gained a lot of knowledge and practical strategies that are helpful to my daily work. It is great to take this course and learn from Gene and John.”

— Claire, Toronto CA

“I had taken a patent bar course from Gene and John and I enjoyed it. This course was even better, combining patent law fundamentals with their years of practical prosecution experience.  I especially liked the abridged MPEP they made, which will be a huge time-saver, and the Q&A at the end of each day.”

—Craig L., San Jose

“The registration exam was tough, but launching into the IP world as a solo patent practitioner has been a real challenge.  The Patent Practice Course has really helped me with my business. Notably, I have been able to refine my approach to prior art searches, write better claims, use USPTO E-forms, and how to let people in my community know about me and the patent services I offer. Gene and John shared stories about securing patents, and working successfully with clients, and went on to assure us that we can do that too. I recommend the class.  It is well worth the time and tuition.”

—K, Patent Attorney, Texas

“Taking the “Patent Practice Training” course was very useful for a new patent agent like me. Studying for the patent bar exam provided knowledge of the law but not enough information about the important aspects of filing an actual application, drafting claims and preparing responses to office actions. I especially enjoyed learning about the Federal Circuit case outcomes and new case law in the course. The workshops were interesting and hands-on. The explanations provided using actual pertinent patents were useful in developing an understanding of concepts. Most importantly, Gene and John patiently answered the questions at each lesson. I learned a lot in this course and encourage others to consider taking it as well. ” 

—M.K., Patent Agent, Texas


Cancelation Policy

Because space for our live courses is limited, cancellations will be subject to cancellation fees as follows:

  • Cancelations 6 weeks prior to the event will be subject to a 10% processing fee*
  • Cancelations 4 weeks prior to the event will be subject to a 20% processing fee*
  • Cancelations within the last 2 weeks prior to the event, no refund be will be given*

*In the event that we have a waiting list and can fill your spot immediately upon your cancellation, we will be happy to give you a full refund regardless of when you cancel.