Home / Kalender / Studiedag / ==POSTPONEMENT == Dealing with Obviousness Rejections in the US Patent Office: Strategies Based on Legal Arguments and Realities of Communicating With the US Examiner

==POSTPONEMENT == Dealing with Obviousness Rejections in the US Patent Office: Strategies Based on Legal Arguments and Realities of Communicating With the US Examiner

Due to the increasing number of corona virus infections in Belgium and in the United States, and taking into account that the risk of further spread of the coronavirus will increase, we have decided, in consultation with Dale Bjorkman, to postpone this seminar to a later date in autumn 2020.


Practice before the US Patent Office is different from every other patent office in the world.  US Examiners don’t use the problem-solution approach, and the way they analyze and apply references to claims seems overly expansive and chaotic to European patent practitioners.  We will start off by understanding the way US Examiners think and what motivates them.  We will then explore the standards used in Obviousness Rejections and discuss specific argument approaches that are effective in overcoming these rejections by refuting the prima facie case of obviousness, and by rebutting the prima facie case through use of secondary considerations to establish the patentability of the invention.  Finally, we will then work through managing US prosecution, optimizing activities that can be carried out at different stages of prosecution to “manage the clock.”                                    


Morning:  9:30 – 12:00
Understanding US Examiners and how to speak with them
Obviousness standard – person of ordinary skill
Response strategies to prevent establishing the prima facie case 
– analysis approaches and refuting the combination of references

Warm lunch (3 courses) : 12:00-13:00

Afternoon : 13:00-15:30
Removal of references under the AIA
Rebutting the prima facie case
- secondary considerations, what they are and when to use them
Stages of prosecution and options at each stage (managing the clock)

16:00 : Q&A and closure

Speaker - Language - Target Group

About the speaker

Dale Bjorkman is a US attorney with almost 38 years of experience in the patent field on all sides of the process.  Mr. Bjorkman is a graduate of the University of Minnesota with a degree in chemistry, and worked as a Patent Examiner in the US Patent Office for five years.  He received his JD from Georgetown University Law Center, and then was in-house Intellectual Property Counsel at 3M for 13 years.  Since 2001, he has been in private practice at Kagan Binder, LLC in Stillwater Minnesota, and is a partner with the firm. He is a frequent lecturer on issues in US and International Patent Prosecution, agreements, and other IP related topics.  Since 2012, he has served as adjunct faculty at Mitchell Hamline School of Law, where he co-teaches the law course on Patent Prosecution.  


All documentation will be made available in English. The spoken language will be English, but native bilingual speaker familiar with the subjects will be at hand to assist.

Target Group

This seminar is for anyone involved in preparing or managing the preparation of Office Action responses in US prosecution.  It is designed to be helpful in proposing strategies for responses, understanding the reasons behind recommendations received from US counsel for response strategies and for helping to explain these strategies to business clients.

Contact & info

Christine Mortelmans
ie-net ingenieursvereniging vzw
Tel: 032600863
01/01/2021 Van: 09u30 tot 16u00
Het Ingenieurshuis Desguinlei 214 2018 Antwerpen

Participation fees :

€ 500,00 for non-members
€ 350,00 for members ie-net
€ 350,00 for corporate members ie-net
€ 250,00 for members ie-net <30y or >65y

Fees are exempted from VAT.