Markush Claims in Patent Prosecution and Litigation: Leveraging Federal Court Guidance
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on Markush claims in the prosecution and litigation of patents. The panel will review the original case, Ex Parte Markush, and other critical cases, including recent PTAB appeal and IPR decisions. The panel will discuss the ongoing debate about what Markush groups mean, how to handle patent prosecution, and offer guidance on Markush practice.
Outline
- Review of crucial cases related to Markush practice
- Ex Parte Markush (Comm'r Pat. 1924)
- Recent court and PTAB treatment
- Common issues arising in Markush claims
- Indefiniteness
- Double inclusion
- Combination vs. compound claims
- Generic claims
- Improper Markush grouping
- Improper Markush claim language
- What Markush groups mean
- Combating improper Markush rejections
Benefits
The panel will review these and other key issues:
- What are the lessons from Federal Circuit decisions?
- What steps can patent counsel take to avoid indefiniteness, double inclusion, and other issues that arise with Markush claims?
- What strategies should patent counsel employ to reduce the likelihood of an improper Markush rejection?
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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Thomas L. Irving
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 35 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. Mr. Irving has served as lead counsel in many patent interferences.
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Dr. Amanda K. Murphy, Ph.D.
Partner
Finnegan Henderson Farabow Garrett & Dunner
Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new... | Read More
Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.
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Krista Aiello
Assistant General Counsel-Patents
Unilever
Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry... | Read More
Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry including beauty and personal care products and compositions (bars, liquids, sanitizers, shampoos, conditioners, etc.). She is skilled in Patent Prosecution, Freedom to Operate (FTO), Patent Portfolio Analysis, Patent Law, Technology Transfer, NDA/CDAs, and other aspects of Intellectual Property.
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