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 CLE webinar with Q&A

Conducted on Thursday, December 21, 2017

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 avoid unpatentability and 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. Institution rates remain high (over two-thirds of petitions are granted) as do cancellation rates of instituted claims (nearly 80%). 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, the initial objective for a patent owner is to have the petition denied.

A well-drafted specification and file history, including declarations presented therein provide the basis for the Patent Owner’s Preliminary Response (POPR), and a means to avoid institution of an IPR or PGR completely or partially, or possibly even to achieve settlement.

Listen as our authoritative panel offers 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
    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?


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

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

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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