Advanced strategies for securing, prosecuting and strengthening U.S. patents in a post-Alice, post-Arthrex landscape, with practical guidance for technology-driven clients.
Patent prosecution continues to evolve amid heightened subject matter eligibility scrutiny, increased PTAB activity, AI-assisted invention disclosures, and expanding global filing strategies. For technology companies, research institutions, and growth-stage businesses, the patent application process is no longer a procedural formality but a strategic exercise that directly affects valuation, enforcement leverage, and competitive positioning.
Recent Federal Circuit guidance on §101 eligibility, written description, enablement, and obviousness has materially influenced drafting practices. At the same time, USPTO initiatives, continuation strategy, and portfolio architecture decisions have become central to long-term IP value creation.
This program provides a practical, prosecution-focused framework for navigating the modern U.S. patent system. It addresses drafting strategy, examiner engagement, appeal considerations, and portfolio planning with a focus on protecting technical innovation while managing cost, risk, and enforceability.
Partner | Kirby Drake Law
Since 2002, Kirby has focused her efforts on helping clients successfully navigate their intellectual property (IP) challenges. She thrives on troubleshooting IP issues. She also enjoys being an advisor to clients when they need assistance in identifying, protecting, and leveraging their IP. Kirby has a special focus on the patent process, as she is a registered patent attorney. The patent system can be complicated, and Kirby helps clients be more comfortable and understand what inventions they can protect and how best to protect them. These inventions can be wide-reaching, and Kirby endeavors to make the patent process accessible to all, whether a start-up or a Fortune 500 company. Kirby utilizes checklists and forms and manages deadlines, sweating even the small stuff when it comes to IP for her clients so they can focus on growing and managing their businesses. Not only does Kirby work with clients to tackle their IP issues as part of my her practice, but she is also committed to IP education and advocacy through her work with the State Bar of Texas and the American Chemical Society. As part of the State Bar of Texas, Kirby served as Chair of the IP Section for the 2018-2019 bar year, where the Section offered IP pro bono workshops for Texas entrepreneurs and also held its first Trademark Boot Camp, educating attorneys, paralegals and law students on the nuts and bolts of trademark law. Kirby also served as Chair of the American Chemical Society (ACS) Committee on Patents and Related Matters for 2018-2020, where she focused on educating members and the public about patents and other important IP issues and identifying opportunities to advocate on the importance of IP.
