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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 video webinar with Q&A

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Conducted on Monday, July 15, 2024

Recorded event now available

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This CLE course will guide patent counsel on drafting and prosecuting U.S. patent applications to balance the broadest claim interpretations while avoiding unpatentability and survive to provide a basis for proving infringement. The panel will offer best practices to solidify novelty, non-obviousness, enablement, and written description positions for PTAB AIA post-grant proceedings (but remaining mindful of litigation objectives). Also, at present obviousness-type double patenting (ODP) cannot be raised in an IPR or PGR petition. But, what good does it do to achieve denial and then later in a reexam or litigation, go down in flames on ODP? We will have a look at this point also.


IPRs remain weighted in favor of patent challengers, and the ability to amend, not just cancel, claims in post-grant proceedings has been rare. Institution rates, though declining from the first years of AIA post-grant proceedings, remain elevated, as do cancellation rates of instituted claims (still almost 2/3 of all Final Written Decisions find all challenged claims unpatentable, according to USPTO stats). Practitioners must act during drafting and prosecution to strengthen their potentially critical patent applications against PTAB scrutiny.

The initial objective for a patent owner is to have the petition denied. A well-drafted specification and file history, possibly including declarations presented therein, but making sure not to raise inequitable conduct/patent misuse issues, provide the basis for the patent owner's preliminary response and a means to avoid the institution of an IPR or PGR entirely or possibly even to achieve a settlement. Also, the patent owner should think about means plus function claims in pharmaceutical/chemical specifications, taking into account lessons learned from the Xencor and Chamberlain cases.

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. 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 claims unpatentable under the broadest reasonable interpretation standard before the PTAB? Is the equation different for patent owners in regulated fields such as pharmaceuticals.
  • How can practitioners introduce substantial grounds for patentability under Sections 102, 103, and 112 in the specification and prosecution history?


Burgy, Adriana
Adriana L. Burgy

Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  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

Irving, Thomas
Thomas L. Irving

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

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