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Advanced Patent Prosecution Topics 2018: Ethics, a WebEx Examiner Interview, the Patent Office and Six Years of Post-Grant Proceedings (Plenary Sessions from Advanced Patent Prosecution Workshop 2018)


Speaker(s): Jay P. Lessler, Kenneth N. Nigon, Robert C. Faber, W. Todd Baker
Recorded on: Sep. 28, 2018
PLI Program #: 243695

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).


Kenneth Nigon has been an IP lawyer for 33 years.  Ken’s practice focuses on US and international patent protection for computer hardware, software, and business methods. Ken is a co-chair and a member of the Practising Law Institute faculty for the annual Advanced Patent Prosecution Workshop. Ken is a contributing author for Electronic and Software Patents: Law and Practice, a treatise published by BNA Books. Ken is a past-president of the Philadelphia Intellectual Property Law Association and has served on the board of directors and held many committee leadership positions in the American Intellectual Property Law Association where he currently serves as vice-chair of the Patent Relations with the USPTO Committee.  He earned recognition and is listed in Chambers & Partners America’s Leading Lawyers for Business, in The Best Lawyers in America and in Pennsylvania Super Lawyers.


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.


W. Todd Baker is Chair of the firm’s Post-Grant patent practice group and a member of the firm’s Management Committee.  He has significant experience handling patent prosecution and post-grant proceedings at the USPTO, including all aspects of reissue applications, ex parte reexamination, IPR proceedings and appeals to the USPTO’s Patent Trial and Appeal Board (PTAB).  Mr. Baker frequently advises his clients on alternatives to traditional litigation-based patent validity challenges, issues of priority, patentability, derivation, inventorship, and licensing related to patent interference matters before the PTAB.

Mr. Baker prepares and prosecutes patent applications in diversified electrical and mechanical technologies, including artificial intelligence (AI), automotive related technologies – such as autonomous vehicles, clean technologies, dynamic control systems, medical devices and wireless innovation.