Navigating Section 112(a) Enablement and Written Description

Withstanding 112(a) Rejections and Attacks on Patent Validity and Patentability

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


Conducted on Thursday, June 4, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel on leveraging Federal Circuit and PTAB decisions and offer strategies to overcome §112 challenges or, in the context of AIA’s post grant proceedings, and specifically inter partes review (IPR) and post grant review (PGR), how to utilize the extant §112 precedent to break chains of date benefit or mount substantive §112 attacks in PGR. In other words, this educational program will look at attacks under the §112 sword, as well as shields for defeating such attacks whether before the USPTO, district courts or PTAB in AIA post-grant proceedings.

Description

Federal Circuit patent decisions, such as Rochester and Ariad demonstrate that §112(a) (para. 1 pre-AIA) issues remain a constant challenge for practitioners. To be sure, counsel for the patent applicant can draw on CCPA cases and Federal Circuit cases for guidance in presenting evidence and/or arguments to buttress challenges against pending and/or issued claims based on written description support or lack of enablement.

In Butamax Advanced Biofuels L.L.C. v. Gevo Inc., IPR2013-00539 (P.T.A.B. Mar. 3, 2015), the petitioner broke the chain of priority by establishing that the claim limitations contained in challenged claim 1 of the patent did not have written description support all the way back to the earliest two priority applications. The result of that strategy was that information became prior art that would not have been had the priority chain been unbroken, and resulted in a finding of unpatentability.

Listen as our authoritative panel of U.S. patent attorneys, totaling almost 100 person years of patent law experience, examines the lessons provided by Federal Circuit case law, the CCPA cases, and recent Federal Circuit and PTAB decisions relating to §112 issues, such as the panel decision in Butamax. The panel will offer guidance for meeting the written description and enablement requirements and withstanding challenges based on written description and enablement.

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Outline

  1. Lessons from the CCPA and Federal Circuit decisions that reversed §112, first paragraph, rejections/invalidity holdings
  2. §112 Federal Circuit decisions sustaining §112, first paragraph, attacks
  3. PTAB IPR decisions on §112 issues in the context of breaking the priority/date benefit chain
  4. Prosecution suggestions for strengthening patent applications against §112 attacks on validity in district court and patentability attacks in ex parte USPTO prosecution and the AIA IPR and PGR proceedings
  5. Suggestions for analyzing §112 issues to present attacks to break the chain of priority in AIA IPRs and to substantively make §112 challenges in PGRs

Benefits

Our panel will discuss these and other important issues:

  • What judicial lessons can patent counsel draw when drafting claims and making during ex parte prosecution arguments at the USPTO of written description support and enablement for those claims?
  • What steps can counsel for patentees take to meet the written description requirement and withstand invalidity/unpatentability challenges based on written description and enablement, whether at the PTAB, in expert prosecution or in district court litigation?
  • What steps can counsel for alleged infringers and/or clients concerned about freedom to operate take to utilize §112 to make challenges to date benefit/priority in IPRS and to do the same, as well as make substantive §112 challenges in PRGs?

Faculty

Rekha Bansal
Rekha Bansal
Sr. Director of IP
Principia Biopharma

Ms. Bansal heads the Intellectual Property department at Principia Biopharma. She develops and executes corporate IP...  |  Read More

Irving, Thomas
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

Deborah M. Herzfeld
Deborah M. Herzfeld

Of Counsel
Finnegan Henderson Farabow Garrett & Dunner

Ms. Herzfeld focuses her practice on patent prosecution and counseling work, with an emphasis on chemical subject...  |  Read More

Rachel L. Emsley, Esq.
Rachel L. Emsley, Esq.

Finnegan Henderson Farabow Garrett & Dunner

Ms. Emsley focuses on patent prosecution, client counseling, district court litigation and appeals, with an emphasis on...  |  Read More

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