William E. Nowakowski Image

William E. Nowakowski

is of counsel to the Buffalo, New York law firm of Magavern Magavern Grimm LLP and upon admission to the Patent bar he plans, with a biology background, to redirect to his practice to patent and trademark law. His current practice areas include litigation, commercial, real estate, and debtor/creditor relations. Mr. Nowakowski previously was in private practice in Buffalo and Washington, DC. His experience includes having served as outside counsel to the Erie County Department of Social Services and formerly was District Tax Attorney for the New York State Department of Taxation and Finance. Mr. Nowakowski is admitted to practice in all New York State Courts as well as the U.S. District Court for the Western District. In addition, he is admitted to practice in the United States Court of Appeals, Second Circuit and District Court for the District of Columbia.

Recent Articles by William E. Nowakowski

A STEPP In the Right Direction: A review of the PTO Stakeholder Training on Examination and Practice and Procedure (STEPP)

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in order to prepare to conduct a search. Work sheets and a sample problem of a mechanical device (a tortilla making machine) application with prior art references were provided to the attendees so they could do a disclosure analysis, determine any §112(f) issues, create a claim diagram, create a claim tree and ascertain if there are any other §§112 and/or 101 grounds of rejection. Another exercise was claim mapping using the same sample problem and additional prior art using PTO forms to formulate allowances and rejections. After the exercises were completed, there was discussion of what was learned and how there are many different ways to reach a conclusion.

Reflections of the Patent Bar Exam

Recently I took and passed, on my second attempt, the United States Patent & Trademark Office Registration (bar) Exam. It is a daunting experience but manageable with some occasional misery in the mix. The exam is offered once a year in Virginia on paper otherwise you schedule your own computer exam at a Prometric testing site. The total time needed to prepare for the exam is about 150 hours of solid study/course time. It is a hundred questions divided into two three-hour sessions with an hour break.