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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

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 Oblon’s Post-Grant Patent practice group and is a member of the firm’s Management Committee. With significant experience in both patent reexamination and interference cases, Mr. Baker is uniquely positioned to advise clients on post grant USPTO proceedings such as inter partes review (IPR) and post grant review (PGR) proceedings, complementing traditional litigation-based patent validity challenges.

Mr. Baker is a recognized leader in the IP community, having recently served on the Board of Directors of the American Intellectual Property Law Association (AIPLA). Indeed, he was selected as one of the top attorneys in the country for adversarial post-grant proceedings:

Patent interference chair W. Todd Baker is ... extolled. “He develops an intimate understanding of and appreciation for the client’s business position”, enabling him to provide commercially driven advice.

Mr. Baker has extensive experience handling all aspects of post-issuance proceedings at the USPTO including reissue applications, ex parte reexamination, IPR proceedings, and appeals to the USPTO’s Patent Trial and Appeal Board (PTAB). Mr. Baker also advises clients on issues of priority, patentability, derivation, inventorship, and licensing related to patent interference matters before the PTAB.

While focused on his post-grant practice, Mr. Baker also prepares and prosecutes patent applications in diversified electrical and mechanical technologies as a member of the firm’s Electrical and Mechanical Patent Prosecution groups. Among the technologies with which he has worked are automotive related, wireless innovations, medical devices, dynamic control systems, and clean technologies.


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 32 years and is currently with the firm Schwegman Lundberg & Woessner, P.A. He earned his B.S. in Electrical Engineering from the University of Notre Dame, his M.S. in Electrical Engineering/Computer Engineering from Stanford University, and his J.D. from Temple University. Before entering the legal profession, he worked for nine years as a systems programmer. He has served as president of the Philadelphia Intellectual Property Law Association, chair of the American Intellectual Property Law Association (AIPLA) Electronic and Computer Law Committee, co-vice chair of the AIPLA Professional Programs Committee, chair of the Patent Law Committee, vice chair of the AIPLA Committee on Legislation and Treasurer of AIPLA. He is currently chair of the AIPLA Patent Relations With the USPTO Committee. Mr. Nigon is listed in Chambers & Partners America’s Leading Lawyers for Business in The Best Lawyers in America and in Pennsylvania Super Lawyers.