Patent Prosecution: Leveraging Declarations to Strengthen Patents Against Post-Grant Proceedings
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will guide patent counsel to prepare and submit declarations during the prosecution of U.S. patent applications to support the desired claim interpretation, non-obviousness, and Section 112 positions.
Outline
- Prosecution declarations
- Possible declarants
- When to use
- Use of prosecution declarations
- Claim construction
- State of the art/level of ordinary skill in the art
- Inherency position
- Objective evidence of non-obviousness
- Enablement
- Written description/show possession of subject matter
- Considerations
- "Big picture" of a patent at issue
- Patent owner's business objectives with the patent at issue
- Litigation/post-grant proceedings of related applications/patents
- Therasense
- Evidentiary issues (especially hearsay) of a prosecution declaration when used in a PTAB proceeding
- "Big picture" of a patent at issue
Benefits
The panel will review these and other key issues:
- How can practitioners prepare and submit declarations during prosecution to strengthen the application against the threat and/or efficacy of a third-party's post-grant challenges?
- What can patent owners do to try and obtain the desired claim construction in both litigation and post-grant proceedings?
- How can practitioners introduce substantial grounds for patentability under Sections 102, 103, and 112 in the specification and prosecution history so that IPRs and PGRs are either denied or otherwise ineffective against the challenged instituted claims?
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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Mark J. Feldstein, Ph.D.
Partner
Finnegan Henderson Farabow Garrett & Dunner
Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and... | Read More
Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and trade secret issues, and post-grant trial proceedings at the USPTO, including inter partes review (IPR) and post grant review (PGR). He maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients. He also provides opinions and strategic guidance to clients on infringement, validity, enforceability, and clearance matters. His practice encompasses a range of technologies, including pharmaceuticals, biochemistry, polymers, small molecule chemistry, optics, and medical and analytic devices.
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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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Jill K. MacAlpine, Ph.D.
Partner
Finnegan Henderson Farabow Garrett & Dunner
Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,... | Read More
Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling, primarily in the chemical and pharmaceutical areas. She has extensive experience in handling patent matters before the U.S. Patent and Trademark Office (USPTO), including post-grant proceedings specifically IPRs, appeals, and oral hearings at the PTAB; drafting and prosecution of patent applications; reissue and reexamination proceedings; and interferences.
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