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
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.
Outline
- Claim drafting strategies across various fields of technology
- Specification drafting strategies
- Prosecution strategies
- Continuation applications
- Carefully prepared declarations
- To shore up claims against inherency attacks
- To support written description and enablement
- To support nonobviousness
- To avoid inequitable conduct attacks in litigation
- 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 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?
Faculty
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
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. He has served as lead counsel in many patent interferences.
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John M. Mulcahy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Mulcahy focuses on patent litigation before both the ITC and federal district courts. His litigation experience... | Read More
Mr. Mulcahy focuses on patent litigation before both the ITC and federal district courts. His litigation experience includes examining expert witnesses at deposition and trial; preparing Markman, summary judgment, and various post-trial motions; and participating in settlement negotiations. He also has extensive experience in the strategic use of reexaminations in litigation and has filed numerous successful requests. He has successfully argued before the PTAB, and has filed and prosecuted numerous applications.
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