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Patent Prosecution: Leveraging Declarations to Strengthen Patents Against Post-Grant Proceedings

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

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Conducted on Wednesday, April 8, 2020

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This CLE course will guide patent counsel to prepare and submit declarations during the prosecution of U.S. patent applications to support the desired claim interpretation, non-obviousness, and Section 112 positions.


In the post-AIA patent world, practitioners face the genuine possibility that patents issuing from applications they have drafted or prosecuted will be involved in post-grant proceedings, inter partes review (IPR) or post-grant review (PGR). To date, the institution rate of the Patent Trial and Appeal Board for IPRs is 66% (5688/8663) and so far, in the granted petitions, 72% (27774/38580) of the challenged claims have been found unpatentable. For PGRs, the number of petitions filed is much lower, but the institution grant rate is 59% (86/147) and, on a per case basis, all claims were held unpatentable in 70% of the instituted cases.

Practitioners must respond while also maintaining best practices during prosecution in the context of potential district court litigation. A suggestion is to act during prosecution to strengthen potentially critical patent applications against PTAB scrutiny through the use of declarations. The specification and file history are fair game to present in the POPR, providing a means to avoid institution of an IPR or PGR, or possibly even to achieve settlement.

Listen as our authoritative panel proposes concrete suggestions for preparing and submitting declarations during prosecution of U.S. patent applications to support the desired claim interpretation, non-obviousness, and Sec. 112 positions. The panel will offer best practices to solidify novelty, non-obviousness, enablement, and written description positions during prosecution to strengthen patents against later post-grant challenges.



  1. Prosecution declarations
    1. Possible declarants
    2. When to use
  2. Use of prosecution declarations
    1. Claim construction
    2. State of the art/level of ordinary skill in the art
    3. Inherency position
    4. Objective evidence of non-obviousness
    5. Enablement
    6. Written description/show possession of subject matter
  3. Considerations
    1. "Big picture" of a patent at issue
      1. Patent owner's business objectives with the patent at issue
      2. Litigation/post-grant proceedings of related applications/patents
    2. Therasense
    3. Evidentiary issues (especially hearsay) of a prosecution declaration when used in a PTAB proceeding


The panel will review these and other key issues:

  • How can practitioners prepare and submit declarations during prosecution to strengthen the application against the threat and/or efficacy of a third-party's post-grant challenges?
  • What can patent owners do to try and obtain the desired claim construction in both litigation and post-grant proceedings?
  • How can practitioners introduce substantial grounds for patentability under Sections 102, 103, and 112 in the specification and prosecution history so that IPRs and PGRs are either denied or otherwise ineffective against the challenged instituted claims?


Burgy, Adriana
Adriana L. Burgy

Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

Feldstein, Mark
Mark J. Feldstein, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and...  |  Read More

Irving, Thomas
Thomas L. Irving

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

MacAlpine, Jill
Jill K. MacAlpine, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,...  |  Read More

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