Navigating Section 112(a) Enablement and Written Description
Withstanding 112(a) Rejections and Attacks on Patent Validity and Patentability
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course 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.
Outline
- Lessons from the CCPA and Federal Circuit decisions that reversed §112, first paragraph, rejections/invalidity holdings
- §112 Federal Circuit decisions sustaining §112, first paragraph, attacks
- PTAB IPR decisions on §112 issues in the context of breaking the priority/date benefit chain
- 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
- 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
Sr. Director of IP
Principia Biopharma
Ms. Bansal heads the Intellectual Property department at Principia Biopharma. She develops and executes corporate IP... | Read More
Ms. Bansal heads the Intellectual Property department at Principia Biopharma. She develops and executes corporate IP strategy which includes devising and executing worldwide patent preparation and prosecution strategy, trademark protection, due diligences, fund raising activities, and license agreements. She counsels clients, including senior management, on issues of freedom-to-operate, patentability, infringement, legal/patent strategies for obtaining and maintaining US and foreign IP portfolios, commercial potential of new technologies, patent life cycle management, Hatch-Waxman issues, and third party challenges such as Inter Partes Review (IPR).
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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.
CloseDeborah 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
Ms. Herzfeld focuses her practice on patent prosecution and counseling work, with an emphasis on chemical subject matter such as cosmetics, pharmaceuticals, biofuels, petroleum based products and catalyst technologies, as well as medical devices. Her client counseling experience includes freedom-to-operate, patentability, validity, and infringement opinion letters, portfolio and due diligence analysis.
CloseRachel 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
Ms. Emsley focuses on patent prosecution, client counseling, district court litigation and appeals, with an emphasis on patents related to electronic technology, computer software, business methods, Internet applications, and robotics, among others. Her patent office practice includes strategic advice; opinions; drafting and prosecuting U.S. and foreign patent applications; and representing clients in PGR proceedings, including reexamination, IPR, and the transitional program for covered business method patents.
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