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Advanced Patent Prosecution Workshop 2019: Claim Drafting & Amendment Writing

Author(s): Ann M. McCrackin, Sanjeet K. Dutta, Pauline Farmer-Koppenol, W. Todd Baker, Jay P. Lessler
Practice Area: Intellectual Property
Published: Jul 2019
ISBN: 9781402434440
PLI Item #: 252769
CHB Spine #: G1424

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. 

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).

Ann McCrackin is the President and Chief Business Development Officer for Black Hills IP as well as a patent prosecution process expert and a highly accomplished patent attorney with extensive experience in both U.S. and international patent prosecution.  Before becoming President of Black Hills IP Ann was a Professor of Law and the Director of the nationally recognized Patent Prosecution and Procedure Program at Franklin Pierce Law Center (now the University of New Hampshire School of Law).  At Franklin Pierce, Ann directed the program and taught courses in advanced aspects of practice before the United States Patent and Trademark Office (USPTO).  Ann has also taught dozens of continuing legal education courses and seminars on various aspects of patent process and prosecution and has edited and authored a number of legal texts on patent law.  Ann is also attorney of record for several Amicus Briefs filed in patent cases before the U.S. Supreme Court and the Court of Appeals for the Federal Circuit.  Ann was a Shareholder at the Minneapolis patent firm Schwegman, Lundberg & Woessner, P.A. for eight years.  Ann has an undergraduate degree from Iowa State University and a law degree from Franklin Pierce Law Center.

Sanj Dutta is a partner in Goodwin’s Technology Companies group and a member of the firm’s Intellectual Property Transactions and Strategies practice. He advises companies on patent prosecution across a variety of technology areas, including blockchain, big data analytics, finance, virtualization, cybersecurity and software security. He also advises companies on IP issues in connection with mergers and acquisitions, as well as technology transfers and licensing. He has handled numerous IP matters in state and federal courts and before the International Trade Commission (ITC) and the Patent Trials and Appeals Board (PTAB). He has also successfully invalidated highly litigated patents in the U.S. Patent and Trademark Office.

With a background in electrical engineering, Mr. Dutta is well-equipped to understand complex issues that sit at the intersection of law, science and technology, enabling him to handle a wide range of issues, including those relating specifically to computer technologies.

Pauline Farmer-Koppenol is Associate General Counsel – Patents for Bio-Rad Laboratories’ Clinical Diagnostics Group. In that role she manages CDG’s patent portfolio which covers instruments, diagnostic assays and controls. In addition, she advises the research and development units on intellectual property matters generally and negotiates research-related agreements as well as patent licenses. Prior to joining Bio-Rad in 2014, Pauline was an associate at Fenwick & West LLP where she represented life science and software clients. Her practice at Fenwick ranged from patent prosecution, patent portfolio analysis, intellectual property strategy counseling and negotiating research agreements and patent licenses.