Prosecution and Specification Statements: Implications for Patent Claim Construction in Parent and Sibling Applications and PTAB and District Court/Federal Circuit Litigation
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide patent counsel on the use of prosecution history and specification statements. The panel will discuss what this could mean for litigation and PTAB proceedings as well as parent and sibling patent applications. The panel will offer best practices for making prosecution and specification statements.
Outline
- Prosecution and specification statements in the application process
- Limitations, disclaimers
- Implications for parent or sibling applications
- Implications for litigation
- Recent decisions
- Best practices
Benefits
The panel will review these and other key issues:
- What are the potential hurdles when making a prosecution and/or specification statement?
- What are the potential implications for litigation and PTAB proceedings? For parent or sibling applications?
- What practical considerations should counsel keep in mind when making prosecution and specification statements?
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
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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Michelle E. O'Brien
Partner
The Marbury Law Group
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in... | Read More
Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.
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