Drafting and Prosecuting Patent Applications to Withstand PTAB Scrutiny
Building Reasonable Claim Construction to Avoid Unpatentability and Using Declarations to Survive Post-Grant Proceedings
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on drafting and prosecuting U.S. patent applications to balance the broadest claim interpretations while avoiding unpatentability and survive to provide a basis for proving infringement. The panel will offer best practices to solidify novelty, non-obviousness, enablement, and written description positions for PTAB AIA post-grant proceedings (but remaining mindful of litigation objectives). Also, at present obviousness-type double patenting (ODP) cannot be raised in an IPR or PGR petition. But, what good does it do to achieve denial and then later in a reexam or litigation, go down in flames on ODP? We will have a look at this point also.
Outline
- Claim drafting strategies across various fields of technology
- Specification drafting strategies
- Prosecution strategies
- Continuation applications
- Carefully prepared declarations
- Judicious use of patent profanity to limit reasonability of broadest claim construction, at least in certain embodiments
Benefits
The panel will review these and other key issues:
- How can practitioners draft and prosecute patent applications and claims to minimize the threat and/or efficacy of a third-party's post-grant challenges?
- How can patent owners obtain broad claims to keep competitors at bay while countering attempts to render those claims unpatentable under the broadest reasonable interpretation standard before the PTAB? Is the equation different for patent owners in regulated fields such as pharmaceuticals.
- How can practitioners introduce substantial grounds for patentability under Sections 102, 103, and 112 in the specification and prosecution history?
Faculty
Adriana L. Burgy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the... | Read More
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. From a patent prosecution perspective, she has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios.
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Anthony M. Gutowski
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent... | Read More
Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent matters relating to infringement, validity, due diligence, and licensing. He also focuses his practice on strategic patent portfolio growth, management, and utilization. He has prepared and prosecuted patent applications to patent issuance and has significant experience in securing patent protection outside the U.S. He has developed vast experience in complex USPTO proceedings such as interferences, appeals, reissues, and reexaminations.
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Thomas L. Irving
Partner
The Marbury Law Group
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
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