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

A live 90-minute CLE webinar with interactive Q&A


Thursday, November 16, 2017
1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, October 20, 2017


This CLE webinar will provide guidance to patent counsel for overcoming §103 rejections for biotech and chemical patents. The panel will review recent judicial and PTAB case law and offer insights to address §103 rejections.

Description

Obviousness can be a major hurdle for patent applicants in securing a patent on inventions. An obviousness determination can be complex, and examiners regularly reject patent claims as obvious under §103 in view of 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 PTO challenges. For example, counsel should craft the response to minimize or eliminate prosecution history estoppel.

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 the reply to the rejection.

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.

Outline

  1. Current guidance on §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

Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

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.

Leslie A. McDonell, Partner
Finnegan Henderson Farabow Garrett & Dunner, Boston

Ms. McDonell provides strategic counseling on the procurement and protection of IP in the pharmaceutical, biotechnology, and medical device industries. She coordinates worldwide patent portfolio strategies, evaluates and analyzes competitors' patent positions around the world, and advises and renders opinions on issues of patentability, inventorship, validity, claim scope, infringement, and freedom to operate.

Amanda K. Murphy, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.


Live Webinar

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Includes Early Discount Savings of $50.00 (through 10/20/17)

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This webinar is eligible for at least 1.5 general CLE credits.

CLE credits are not available for PR.

*In KS, OH, PA, for more than 1 attendee on the connection you must contact Strafford CLE via email or call 1-800-926-7926 ext. 35 prior to the program for special instructions.


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Live Webinar & Webinar Download $344.00

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Live Webinar & Audio Download $344.00

Includes Special Savings of $250.00 (through 10/20/17)

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Includes Special Savings of $250.00 (through 10/20/17)


Webinar

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October 20, 2017

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Customer Reviews

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray

Kohler

The program covered topics that are of significant concern to many of my clients and I enjoyed the good discussion of the case law supporting the various points made.

Larry Crabtree

King & Ballow

I appreciated the speakers' practical suggestions on an important topic.

Erica Dominitz

Kilpatrick Townsend & Stockton

The program was very practical and informative for my current needs.

Ken Watt

Frederic Dorwart, Lawyers

or call 1-800-926-7926

Patent Law Advisory Board

Charles S. Baker

Partner

Locke Lord

David S. Bloch

Partner

Winston & Strawn

Irah H. Donner

Partner

Manatt

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick

Partner

Duane Morris

David Segal

Senior IP Counsel

Intel

Astrid R. Spain

Partner

Jones Day

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

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