Overcoming 103 Rejections for Biotech and Chemical Patents: Leveraging Recent Decisions and USPTO Guidance

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


Conducted on Thursday, May 23, 2019

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent counsel for overcoming Section 103 rejections for biotech and chemical patents. Biotech and chemical claims continue to be embroiled in lead compound arguments and rebutting prima facie cases of obviousness based on, for example, ranges. The panel will review recent judicial and PTAB case law and offer insights to address 103 rejections. In particular, the panel will discuss the recent and more frequent appearance of inherency arguments in an obviousness context, as well as several Federal Circuit decisions reminding the PTAB that conclusions of obviousness must be sufficiently supported and cannot be conclusory and merely stated to be based on "common sense."

Description

Obviousness can be a significant hurdle for patent applicants in securing a patent on biotech and chemical inventions. An obviousness determination can be complicated, and examiners regularly reject patent claims as obvious under Section 103 in view of, often, a combination of prior art.

For clients who receive a 103 rejection, counsel's response should be part of a well thought out strategy that anticipates the possibility of later court and PTAB challenges. For example, counsel should craft the response to minimize or eliminate prosecution history estoppel, at the same time making a strong response that a court or PTAB will respect.

Further, in light of the demands of AIA post-grant proceedings, such as post-grant reviews and inter partes reviews, counsel should carefully consider submitting evidence, including comparative data, scientific arguments, and supporting declarations, in reply to the rejection to build the prosecution record. Further consideration should be given to raise the bar a Petitioner will face to persuade the PTAB to find that more likely than not, the claims are unpatentable.

Listen as our authoritative panel of patent attorneys examines how the courts have treated 103 rejections and the USPTO's guidance on 103 rejections. Based on decades of experience, the panel will offer their own war stories on overcoming 103 rejections. The panel will also discuss the distinct challenges for biotech and chemical inventions and best practices for patent counsel to address 103 rejections in biotech and chemical patent applications.

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Outline

  1. Current guidance on Section 103 patent claim rejections
    1. Lessons from recent court decisions
    2. USPTO guidance
  2. Distinct challenges for biotech and chemical inventions
  3. Overcoming 103 rejections in biotech and chemical patent applications

Benefits

The panel will review these and other key issues:

  • What evidentiary support should counsel provide to bolster its assertion of validity/patentability?
  • What tactics should patent counsel implement to overcome 103 rejections for biotech and chemical patents?
  • How can patent counsel guide applicants during patent application drafting to reduce the likelihood of rejection?

Faculty

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

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

Jacobstein, Jeffrey
Jeffrey M. Jacobstein

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Jacobstein focuses on strategic client counseling, including due diligence, patent prosecution, and post-grant...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

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