Model Patent Prosecution Templates
AIPLA's Patent Law Committee maintains a collection of sample documents related to day-to-day patent prosecution. These documents are exemplary and may not be ideal for every situation. Use them at your own risk.*
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Model Response Shells:
Each of these documents contains a comprehensive shell document that can be used to formulate a response to 35 U.S.C. 112, 102, 103, or 101 rejections made by a patent examiner during prosecution.
Model Appeal Brief: (Doc) (PDF)
This document contains the overall structure of appeal brief with a section for drafting responses to point out error in rejections made in 35 U.S.C. 112, 102, 103, 101, and obviousness-type double patenting rejections. The model appeal brief includes summaries of the relevant portions of the PTAB’s designated informative and precedential decisions applicable to ex parte appeals along with associated Federal Circuit case law.
Model Reply Brief: (Doc) (PDF)
This document contains the overall structure of a reply brief along with relevant case law summaries to use for handling new grounds of rejection in an Examiner’s Answer.
*Nothing included in these sample documents or elsewhere on this site should be considered legal advise on the part of AIPLA or any of its members.
Location
Rancho Mirage, CA, United States
Contact
Unlock Your Leadership Potential!
Join us for the inaugural AIPLA Leadership Forum, a transformative experience designed for current and aspiring leaders within the AIPLA community. Guided by subject matter experts, this program will include best-in-class leadership training, interactive team-based workshops and skill-building activities, and one-of-a-kind professional and personal development opportunities with many of the country’s leading IP attorneys. Mark your calendars for January 29-30, 2025, at the stunning Omni Rancho Las Palmas in Rancho Mirage, California.
General Event Schedule - Subject to change (see pre-meeting activities schedule below)
Wednesday, January 29*
- 8:00 am PT - Breakfast, Registration and Check-in (Confirm Team/Division Assignments)
- 9:00 am PT - Welcome and Forum Kick Off!
- 9:15 am PT - Ice Breakers, Team Development Activities
- 10:30 am PT - COFFEE BREAK
- 10:45 am PT - Session 1 - Interactive expert coaching session with author Chris DeSantis on generational diversity and messaging - presentation and affinity exercise based on generational category.
- 12:30 pm PT - REFRESHMENT BREAK
- 12:45 pm PT - LUNCHEON - Leadership Table Talks
- 2:00 pm PT - Break
- 2:15 pm PT - Session 2 - Interactive expert coaching session with author Mary Abbajay
on leadership profiles and strategies, skills, and sensibilities needed
for success - interactive exercise determining your personality
profile, followed by a presentation and then break out group based
exercises.
- 4:00 pm PT - COFFEE BREAK
- 4:15 pm PT - Team Exercises
- 5:15 pm PT - Team Presentations by each Division
- 5:45 pm PT - Sessions conclude
- 7:00 pm PT - TEAM BUILDING Networking Event and Reception
Thursday, January 30*
- 7:00 am PT - Rise & Shine: Morning Wellness Program and AIPLA Fun Run!
- 8:00 am PT - Breakfast
- 9:00 am PT - Coffee and Leadership Discussion with AIPLA Past President Mark Whitaker and President-Elect Sal Anastasi
- 10:00 am PT - Session 1- AIPLA Past President's Panel & Audience Directed Discussion
- Effective Communication, Partnering, Civility, Hard Conversations, Delegation, Active Listening, Appropriate Attribution, Fear, Ego Based Behaviors, and Appropriate Balances between Self and Group. Focus these topics on working with Teams and Clients, Internal and External.
- Formulating Personal Missions
- Panelists: Myra McCormack, Jim Pooley, and Wayne Sobon
- 12:00 pm -REFRESHMENT BREAK
- 12:30 pm PT - LUNCHEON
- 1:15 pm - Honorable John Owens, US District Court for the Ninth Circuit - The Clerk, The Thief, His Life as a Baker: Ashton Embry and the Supreme Court Leak Scandal of 1919
- 1:45 pm PT - Break
- 2:00 pm PT - Session 3 - Strategic plan with interactive breakouts
- 3:15 pm PT - COFFEE BREAK
- 3:30 pm PT - Session 3 - Part 2 - Strategic plan with interactive breakouts
- 4:30
pm PT - Reframe Game - Participants will use cues with a "frame" and a
goal of "reframing a situation" to get away from zero sum concepts of
winning and losing and appreciate the importance of other perspectives.
- 5:15
pm PT - Committee on the Profession Presentation on Opportunities for
Engagement on Professionalism, Civility in the Bar, Ethics, Substance
Abuse and Mental Health and Well-Being.
- 5:30 pm PT - Team Awards and Closing Celebration
- 6:00 pm PT - DINNER - DINE AROUND (on own) - not included in registration
- 7:00 pm PT - AIPLA Past President's Dinner (Past Presidents and Board Members Only)
- 9:30 pm PT - Networking Event and Reception - Game night and Wind down!
*Some events will offer CLE – more details to follow.
Pre-Meeting and AIPLA Board Meeting Schedule
IP Practice in Japan will host their Pre-Meeting beginning Monday, January 27 (full-day) and ending January 28 (half-day). Separate Registration Required.
Executive Committee - Tuesday, January 28 - 10:00 am - 12:00 Noon PT
Board of Directors Meeting- Tuesday, January 28 - 1:00 pm - 5:00 pm PT
Board of Directors Team Building Event - Tuesday, January 28 - 6:00 - 9:00 pm PT
Past President's Dinner - Thursday, January 30 - 7:00 - 10:00 pm PT
Board of Directors Meeting - Friday, January 31, 9:00 am - 12 Noon PT
_____________________________
Why Attend?
At AIPLA, we believe that strong leadership is the cornerstone of success. This exclusive, invitation-only event will empower you to elevate your leadership skills and inspire those around you, not just within AIPLA, but in your career. Over two dynamic days, expert coaches will guide you through:
- Individual Discovery: Discovering your leadership style and how it impacts others.
- Effective Communication: Learn strategies to connect with diverse teams and stakeholders.
- Visionary Thinking: Cultivate a forward-thinking mindset to navigate the complexities of our field.
- Collaborative Strategies: Build relationships that foster innovation and teamwork.
Who Is Invited?
Current AIPLA leaders have received invitations. If you're in the AIPLA leadership and haven't received your invitation, please contact us at aipla@aipla.org.
AIPLA members interesting in leadership or honing their leadership skills are also encouraged to apply. Click here to complete the application to attend.
What to Expect
- Interactive Workshops: Participate in hands-on sessions that encourage active learning.
- Inspiration and Insight: Hear from thought leaders who are shaping the future of our profession.
- Collaborate: Engage with fellow AIPLA leaders and industry experts around strategic initiatives including membership, committee work, education and advocacy.
Save the Date!
More details, including how to request your invitation, will be available soon. Don’t miss this opportunity to enhance your leadership capabilities and inspire others within the AIPLA community.
Elevate yourself, inspire the future—be part of the AIPLA Leadership Forum!
Sponsorship Opportunities available! Please contact Lisa Beller @ 703-981-8440, lbeller@aipla.org. See the prospectus here.
Registration
Early Registration Fee (by January 6, 2025) - $1,695
Late/Onsite Registration, begins January 7, 2025 - $1,895
Registration fees are inclusive of all conference materials, meeting app, CLE, breakfasts, luncheons, networking breaks, and tickets for social events and organized wellness activities. Travel and hotel fees are not included in the registration fees.
Book your stay:
Omni Rancho Las Palmas Resort & Spa
41000 Bob Hope Drive
Rancho Mirage, CA 92270
1-800-THE-OMNI
RESERVATION LINK:
https://bookings.omnihotels.com/event/palm-springs-rancho-las-palmas/aipla-2025
Single/Double Room Rate: $289 plus a $15 resort charge and applicable taxes (currently 13.195%) per night.
The resort charge includes toll free and local calls, access to the fitness center, in-room high-speed Internet access, in-room coffee and tea, access to Splashtopia and Conchilla Valley Pool, digital Wall Street Journal, and two bottled waters per day. The $20 per day self-parking fee is waived. Valet parking is $30 per day. Guests also receive 10% off all Spa services and Giftshop retail.
Reservation Cut-off - Monday, January 6, 2025.
Cancellation deadline - 72 hours prior to arrival.
Omni Select Loyalty Program: http://www.omniselectguest.com
Speakers
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Honorable John B. Owens
U.S. Court of Appeals for the Ninth Circuit | Circuit Judge
Judge Owens clerked for Judge J. Clifford Wallace on the United States Court of Appeals for the Ninth Circuit. The following year, he clerked for Associate Justice Ruth Bader Ginsburg on the United States Supreme Court. After these distinguished clerkships, Judge Owens worked as trial attorney in the Department of Justice’s Office of Consumer Litigation (now Consumer Protection Branch) from 1998 to 1999, and as a litigation association at O’Melveny & Myers LLP in Washington, D.C. from 2000 to 2001. In 2001, Judge Owens became an Assistant United States Attorney in the Central District of California. He transferred to the Southern District of California in 2004. In 2008, he was named Deputy Chief of Major Frauds in that district, and he was elevated to Chief of the Criminal Division in 2010. In 2012, Judge Owens joined the firm of Munger, Tolles, & Olson as a partner. -
Chris DeSantis
For almost 30 years Chris has been an independent organizational behavior consultant. He is a trusted partner to some of the world’s largest companies in the professional services, tech, and pharma industries hired to solve some of their most chronic business problems by offering user-friendly solutions aligned with the company’s strategic initiatives. Before striking out on his own he was the Director of Training and Development for the American Medical Association and was part of the Human Resource Development group for Brunswick Corporation.
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Mary Abbajay
Careerstone Group | President
Mary Abbajay, author of the best-selling Managing Up: How to Move Up, Win at Work, and Succeed with Any Type of Boss is the president of Careerstone Group, LLC, a full service organizational and leadership development consultancy that delivers leading-edge talent and organizational development solutions to business and government. -
Whitaker, Mark
Morrison & Foerster | Partner
Mark Whitaker is the co-chair of Morrison & Foerster’s Intellectual Property Litigation practice group, with more than 30 years of experience crafting legal strategies in high-stakes patent and trade secret litigation. -
McCormack, Myra H.
Until recently, Myra managed a group of patent lawyers who support the Immunology, Infectious Disease and Vaccine Therapeutic Areas for Johnson & Johnson's Pharmaceutical sector where she oversaw the patent portfolios, products, licensing, M&A and diligence activities for J&J's pharm sector particularly in these therapeutic areas.
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Pooley, James
James Pooley PLC | Founder
James Pooley is one of the world’s foremost experts in trade secret law and management. His legal treatise, “Trade Secrets,” updated semi-annually, is the leading lawyer’s desk reference on the subject. His latest business book is “Secrets: Managing Information Assets in the Age of Cyberespionage” (Verus Press, 2015). -
Sobon, Wayne
Juul Labs | Vice President, Intellectual Property
Wayne Sobon is Vice President, Intellectual Property at JUUL Labs, Inc., based in San Francisco, California. JUUL’s mission is to transition the world’s billion adult smokers away from combustible cigarettes, eliminate their use, and combat underage usage of our products.