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Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing

Speaker(s): Jay P. Lessler, Michael P. Dunnam, Robert C. Faber
Recorded on: Jul. 14, 2016
PLI Program #: 187698

Jay Lessler concentrates his practice in domestic and foreign patent procurement, transactions involving intellectual property, client counseling, and patent litigation, primarily in the chemical, pharmaceutical, and computer software arts.

Working closely with inventors and in-house counsel, Jay devises effective strategies to build and protect intellectual property assets, from initial drafting of patent applications to post-grant proceedings. His experience includes:

  • all areas of patent prosecution involving domestic and foreign patents
  • reissues
  • reexaminations
  • patent term extension proceedings
  • inter partes reviews
  • licensing and joint development agreements
  • conducting due diligence investigations
  • conducting validity and freedom-to-operate studies
  • counseling clients in connection with the Hatch-Waxman Act and the Biologics Price Competition and Innovation Act 
  • preparation of Paragraph IV Notice letters and Offers for Confidential Access pursuant to the Hatch-Waxman Act
  • counseling regarding the listability of patents in the FDA Orange Book

He also has significant ANDA and biotech litigation experience.

Jay has been the co-chair of Practising Law Institute’s (“PLI’s”) annual Advanced Patent Prosecution Workshop since 2006. He was also a speaker at PLI’s Patent Boot Camp Workshop from 2002 to 2006, and in 2016 and 2017.

Jay has co-authored numerous chapters on Patent Law and the Hatch-Waxman Act, including the “Generic Drug-Approval Process: Hatch-Waxman Update” chapter in The Pharmaceutical Regulatory Process, Second Edition (edited by I. Berry) (2008), and the "Non-Obviousness, Regulatory Exclusivities for Pharmaceutical Products, Post-Grant Procedures," and "How to Prosecute a Biopharma Patent Application" chapters in Biotechnology And Pharmaceutical Patents (2007) (Aspen).

Michael Dunnam is an attorney with the law firm of Schwegman, Lundberg, and Woessner.  Mr. Dunnam is a past chair of the Electronic and Computer Law Committee of the AIPLA, a past coordinator of the Electronic and Computer Law Committee’s Partnering in Patents Program, Road Shows and Patent Law Summit, and a member of several AIPLA delegations to Japan. Mr. Dunnam also was a recent member of the AIPLA’s 101 Task Force.  Locally, Mr. Dunnam is a former Board Member and Chair of the Computer Practice Committee of the Philadelphia Intellectual Property Law Association. 

Mr. Dunnam has an electrical engineering degree from Brown University and a JD from George Washington University.  Mr. Dunnam started his career as a patent examiner in the U.S. Patent and Trademark Office in the color television arts and was a patent agent with Cushman Darby & Cushman before joining Woodcock Washburn LLP, which merged with Baker Hostetler LLP in January, 2014.  Mr. Dunnam joined the Schwegman firm in August, 2017.

Michael has taught a course entitled Intellectual Property in Business at Temple University Law School and taught in the Intellectual Property Law Clinic at the University of Pennsylvania School of Law.  Michael is active in startup and angel network organizations and is a frequent speaker on topics of intellectual property law, especially patent eligibility.  Michael has lectured for the last several years at PLI’s Advanced Patent Prosecution Workshop in New York City. 

Michael's work primarily focuses on counseling and prosecution of patent applications in the areas of electronics, computer software, cloud computing applications, business methods, telephony, video, lasers, inductive power, autonomous vehicles, medical devices, and medical electronics, such as magnetic resonance imaging technology.

Robert C. Faber has been an intellectual property lawyer for over forty years. He is a graduate of Cornell University and Harvard Law School. He is a partner in the New York City intellectual property law firm of Ostrolenk Faber LLP.

Mr. Faber is the author of the “Sixth Edition of Faber on Mechanics of Patent Claim Drafting” and was the author of the Third, Fourth and the Fifth Editions of “Landis on Mechanics of Patent Claim Drafting,” which the Sixth Edition replaced. This is a prominent text in the patent field.

Mr. Faber had been a member of the faculty of Practicing Law Institute (“PLI”) Patent Bar Review course for more than twenty years, which focused on the Patent Agent’s Examination and claim writing.  He also is a faculty member of PLI’s Advanced Claim and Amendment writing and Fundamentals of Patent Prosecution courses since their inception, and has lectured on intellectual property and patent matters for PLI, the Bureau of National Affairs, New York Intellectual Property Law Association, NY State Bar Association and other organizations.  Mr. Faber has litigated in the courts in patent, trademark and copyright matters.

He has been recognized in the 2007, 2009, 2011 and 2013 publications of the Guide to the World’s Leading Patent Practitioners.  This is a peer recommendation listing of several hundred patent practitioners throughout the world, published by Managing Intellectual Property and Euromoney Institutional Investor, PLC.