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 webinar with Q&A

Conducted on Thursday, September 1, 2016

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel for drafting and prosecuting U.S. patent applications to achieve the broadest claim interpretations that may avoid unpatentability and yet still provide a basis for proving infringement. The panel will offer best practices to solidify novelty, non-obviousness, enablement, and written description positions, both for litigation and PTAB AIA Post Grant Proceedings.


IPRs are heavily weighted in favor of patent challengers, and the ability to amend, not just cancel, claims in post-grant proceedings has been rare. The Supreme Court in Cuozzo has spoken: broadest reasonable claim interpretation applies in PTAB AIA Post Grant Proceedings. And Cuozzo also cautions us that it will be very difficult to attack a PTAB institution decision. Practitioners must therefore act during drafting and prosecution to strengthen their potentially important patent applications against PTAB scrutiny.

With the odds stacked against patentees in an IPR or PGR proceeding, a patentee needs to have multiple tools to thwart post-grant challenges. Even under the new rules, practitioners are uncertain about the implications of presenting newly-generated declaration evidence in a patent owner’s preliminary response (POPR) in an effort to defeat institution of an IPR or PGR. But, at least so far, it seems that the specification and file history, including declarations presented therein, are better for presenting in the POPR, providing a means to avoid institution of an IPR or PGR completely or partially, or possibly even to achieve settlement.

Listen as our authoritative panel proposes concrete suggestions for drafting and prosecuting U.S. patent applications to seek the broadest reasonable claim interpretation while avoiding unpatentability before the PTAB, based on any relevant statutory provision, such as prior art under 35 USC §§ 102 and 103 or nonenablement and lack of written description under 35 USC § 112. The panel will offer best practices to solidify novelty, non-obviousness, enablement, and written description positions.



  1. Claim drafting strategies across various fields of technology
  2. Specification drafting strategies
  3. Prosecution strategies
    1. Continuation applications
    2. Carefully prepared declarations
      1. To shore up claims against inherency attacks
      2. To support written description and enablement
      3. To support nonobviousness
      4. To avoid inequitable conduct attacks in litigation
    3. Judicious use of patent profanity to limit reasonability of broadest claim construction, at least in certain embodiments


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 broad claims unpatentable under the broadest reasonable interpretation standard before the PTAB?
  • How can practitioners introduce strong grounds for patentability under §§ 102, 103 and 112 in the specification and prosecution history in the hopes that IPRs and PGRs are either denied or otherwise ineffective against the challenged instituted claims?


Gutowski, Anthony
Anthony M. Gutowski

Finnegan Henderson Farabow Garrett & Dunner

Mr. Gutowski focuses on client counseling, patent procurement, and patent enforcement. He advises clients on patent...  |  Read More

Irving, Thomas
Thomas L. Irving

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

Mulcahy, John
John M. Mulcahy

Finnegan Henderson Farabow Garrett & Dunner

Mr. Mulcahy focuses on patent litigation before both the ITC and federal district courts. His litigation experience...  |  Read More

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