Patents and the Expectation of Success Doctrine
What is Reasonable, Tension With Enablement, Best Practices for Patent Drafting and Prosecution
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will provide patent counsel with guidance on the doctrine of expectation of success. The panel will examine how much is reasonably needed and the tension between the doctrine and enablement. The panel will discuss recent cases and will offer best practices for patent drafting and patent prosecution.
- History of the requirement for a reasonable expectation of success
- The requirement for a reasonable expectation of success and enablement
- Best practices for patent drafting
- Best practices for patent prosecution
The panel will review these and other key issues:
- Under what circumstances should the reasonable expectation of success be argued during prosecution at the PTAB? During litigation?
- What evidence is necessary to support a reasonable expectation of success argument?
- How can patents be drafted to establish that the disclosure enables the claimed subject matter but that skilled persons would not have had a reasonable expectation of success based on the prior art?
David A. Gosse
Fitch Even Tabin & Flannery
Mr. Gosse helps clients protect their intellectual property rights through litigation, working on all phases of... | Read More
Mr. Gosse helps clients protect their intellectual property rights through litigation, working on all phases of litigation matters, ranging from due diligence investigations through trial and post-trial motions. In district court litigation, he has substantial pre-trial and trial experience, including multiple jury trials relating to patent infringement, validity, and breach of license. Mr. Gosse has argued claim construction and motions for summary judgment and has deposed numerous fact and expert witnesses. In addition, he helps clients procure broad IP protection at the U.S. Patent and Trademark Office, beginning with patent drafting and prosecution and extending to post-issuance reexamination and AIA proceedings as appropriate. He has successfully argued on appeal to the PTAB and has successfully defended patent owners against inter partes review and covered business method petitions at both the preliminary response stage and after institution of trial.Close
Dr. Daniel J. Pereira, Ph.D.
Partner; Co-Head of the Chemical Practice Group
Oblon McClelland Maier & Neustadt
Dr. Pereira’s practice focuses on client counseling, portfolio management, patent prosecution, litigation and... | Read More
Dr. Pereira’s practice focuses on client counseling, portfolio management, patent prosecution, litigation and interferences involving a wide range of technologies including battery materials, recombinant DNA technology, genetics, immunology, enzymology, medical diagnostics, bioinformatics, microarrays, statistical data analysis, genomics, proteomics, nanotechnology, polymer chemistry, metallurgy, solar technology, imaging, medical devices, optical films, coatings, cosmetics, catalysts, ceramics, alloys, chemical engineering, optical and electronic devices. Dr. Pereira has particular expertise in the medical, biotechnology, and pharmaceutical fields. Dr. Pereira has served as co-counsel on interferences cases, advising on issues ranging from strategies for avoiding interferences to strategies for provoking them. Dr. Pereira handles appeals before the BPAI, district court patent litigations, and Federal Circuit appeals, and has extensive experience providing pre-litigation and litigation avoidance counseling to clients.Close
Bryan K. Wheelock
Harness Dickey & Pierce
Mr. Wheelock’s practice includes the preparation and prosecution of patent and trademark applications and... | Read More
Mr. Wheelock’s practice includes the preparation and prosecution of patent and trademark applications and drafting intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Mr. Wheelock prepares and prosecutes U.S. and foreign patent applications for mechanical and electromechanical devices, manufacturing machinery and processes, and metal alloys for clients in the medical device, consumer products, and agrifood tech industries, among others. He also does a substantial amount of patentability searching, trademark availability searching, and patent and trademark infringement studies.Close