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Landslide Series: Leveraging Quantitative Analysis and Qualitative Insights to Improve Examiner Interview Outcomes


Level: Advanced
Runtime: 91 minutes
Recorded Date: January 18, 2022
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Agenda

  • Interview Practice Basics
  • How to Request an Examiner Interview
  • Understand the Benefits of Different Types of Examiner Interviews
  • Strategies for When and How to Conduct an Examiner Interview
  • Understand the Examiner’s Perspective
Runtime: 1 hour, 31 minutes
Recorded: January 18, 2022

For NY - Difficulty Level: For experienced attorneys only (non-transitional)

Description

Examiner interviews are one of the most important tools in a patent applicant's toolbox to move patent prosecution forward. Too often, however, patent applicants approach an examiner interview with a flawed negotiating strategy unlikely to drive a successful outcome. This webinar combines empirical insights from the analysis of over 100,000 examiner interviews with the practical insights of former USPTO examiners to educate participants on the best tools and tactics to achieve successful outcomes in examiner interview practice.

This program was recorded on January 18th, 2022.

Provided By

American Bar Association
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Panelists

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Johsua I. Rudawitz

Associate
Greenberg Traurig, LLP

Joshua I. Rudawitz has more than ten years of multi-faceted strategic intellectual property law experience, including as a Primary Patent Examiner with the U.S. Patent and Trademark Office (USPTO) and counseling clients of all sizes with their intellectual property needs. Josh focuses his practice on the preparation and prosecution of trademarks and patents in fields including medical instruments and devices; mechanical devices; consumer electronics; software and mobile applications; and business and commercial methods. His experience also includes turbine engines; printing devices; consumer mechanical pump technology, additive manufacturing, exoskeleton devices, firearm accessories, and electronic components.

In his role as a Primary Patent Examiner at the U.S. Patent and Trademark Office, Josh was responsible for examination of hundreds of domestic and international patent applications, including analysis and review of the proposed technology to the prior art for compliance with Title 35 of the U.S. Code and related Federal Rules through final disposition. He examined technologies including semiconductor handling robots and manufacturing configurations, automated mechanical parking facilities, automated storage and retrieval systems, vehicle hydraulic systems, waste collection vehicles, vehicle attached accessories, and hoists.

In addition to his experience at the USPTO, Josh has served as a clerk with the Patent Trial and Appeal Board (PTAB), as well as with the Office of the Solicitor at the USPTO.

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Jordan Golomb

Patent Agent
Olympus Corporation of the Americas

I use my background in Mechanical Engineering and Patent Law, including experience working at the United States Patent and Trademark Office and as an inventor, to create, innovate and help others to do the same. My goal is to use my life to improve the experiences of others.

With 20 years of engineering and intellectual property experience, I work on a variety of technologies; including mechanical, electro-mechanical, medical devices, medical diagnostics and automotive technologies. Relying on my own inventing skills (I have three patents of my own), I excel at helping clients broaden and strengthen the ideas they bring to me.

I draft and prosecute patent applications before the United States Patent & Trademark Office, and search worldwide databases to identify potential patentability and infringement issues. I provide my clients a unique perspective on how to work effectively within the patent system based on my experience as a former Patent Examiner at the United States Patent and Trademark Office where I worked in two areas: Biomedical Diagnostic Testing and Land and Motor Vehicles.

I am a patent agent. So what exactly is a patent agent? Patent law is a specialized area of law that is practiced by both patent attorneys and patent agents. Patent law is unique compared to other types of law. The education required to practice patent law is that one is an engineer or scientist, not that one is an attorney. Thus, an attorney who is not also an engineer or scientist, cannot practice patent law. Patent agents are engineers or scientists who have studied patent law specifically and have passed the same U.S. Patent Bar Exam that patent attorney's take. Like attorneys, patent agents represent clients in obtaining patents on their inventions. However, we do not represent clients in other areas such as litigation (lawsuits) and non-patent legal matters. We specialize in obtaining patents.

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S. Sean Tu

Professor of Law
West Virginia University

Dr. Tu is a Professor of Law at West Virginia University and a Scholar at Georgetown University’s O’Neill Institute for National and Global Health Law. He holds degrees in chemistry and microbiology from the University of Florida and a J.D. from the University of Chicago, where he was a research assistant for Judge Richard Posner. Dr. Tu received his doctorate in pharmacology from Cornell University and completed a post-doctoral fellowship at the La Jolla Institute for Allergy and Immunology. He is a member of the Virginia and D.C. Bars and is also a registered Patent Attorney. Dr. Tu has extensive pharmaceutical patent prosecution and litigation experience and practiced at Foley & Lardner in Washington, DC in both the Chemical, Biotechnology & Pharmaceutical Practice and the Life Sciences and Nanotechnology Industry teams.

Dr. Tu is a legal scholar who focuses on Patent Prosecution and Patent Examiner / Applicant behaviors as well as the intersection between FDA and patent law. He is the co-author of three textbooks including the Fundamentals of United States Intellectual Property Law: Copyright, Patent and Trademark (2021); Biotechnology, Bioethics and the Law (2015); and Patent Law: An Open-Source Casebook (2021). He has also published numerous scientific and legal works including articles in Cell, Nature Cell Biology, the Stanford Technology Law Review, Florida Law Review, and the Duke Law and Technology Review.


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