Inherency Doctrine in Patent Prosecution and Litigation

Navigating Court and USPTO Treatment, Proving Anticipation, Overcoming Inherency Rejection

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Tuesday, May 5, 2020

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel on the inherency doctrine in patent prosecution and litigation. The panel will examine how the courts and the USPTO have treated and are treating the issue. The panel will also discuss what it takes to prove anticipation by inherency and offer best practices for overcoming rejections based on inherency.

Description

While inherent anticipation is well-recognized and generally, well-understood, the same cannot be said for inherency in obviousness. Inherent obviousness continues to cause problems for courts, at the USPTO with patent examiners, and for patent applicants.

There has been a growing number of reversals by the federal courts for improper inherent obviousness findings. Those cases demonstrate the disconnect between the Federal Circuit’s position regarding the inherency doctrine in obviousness and misapplication of the doctrine by the USPTO and lower courts.

Patent counsel should understand the positions of the Federal Circuit as well as the USPTO in order to correctly apply the inherency doctrine in anticipation and obviousness contexts when prosecuting patents and when litigating them.

Listen as our authoritative panel of patent attorneys examines the inherency doctrine in patent prosecution and litigation from both anticipation and obviousness perspectives. The panel will discuss how the courts and the USPTO have treated and are treating the issues. The panel will also discuss what it takes to prove anticipation by inherency versus in an obviousness context and offer best practices for overcoming rejections based on inherency.

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Outline

  1. Inherent Anticipation
  2. Treatment of Inherent Obviousness
    1. By the courts
    2. By the USPTO
  3. Proving Inherent Obviousness
  4. Best Practices for Overcoming Rejections Based on Inherency

Benefits

The panel will review these and other key issues:

  • The Federal Circuit's and the USPTO's approach to the inherency doctrine and the disconnect between the two
  • Demonstrating using the inherency doctrine
  • Best practices for overcoming an inherency rejection

Faculty

Browning, Paul
Dr. Paul W. Browning

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman...  |  Read More

Burgy, Adriana
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

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