Patents and the Written Description Requirement

Navigating Section 112 Disclosure Obligations and Withstanding Invalidity Challenges

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


Conducted on Tuesday, November 27, 2012

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to counsel for patentees and patent challengers for dealing with the U.S. Patent Law Section 112's written description requirement. The panel will also discuss the lessons learned since the Federal Circuit's opinion in Ariad v. Eli Lilly for compliance and patent challenges.

Description

The written description requirements call for patent applicants to provide extensive detail about what an invention does. As a result, it can work to reduce the scope of patent protection.

Since the Federal Circuit's decision in Ariad Pharm. Inc. v. Eli Lilly & Co., there has been increased focus on the written description in patent invalidity challenges. The court shed further light on the requirement in Centocor Ortho Biotech v. Abbott Labs.

There is a strong success rate in challenging patents on written description grounds. As a result, patent counsel must pay close attention to recent changes involving the written description requirement to craft a description that will survive patent validity challenges.

Listen as our authoritative panel of patent attorneys examines the written description requirement and how it has been applied. The panel will discuss the lessons from the Federal Circuit’s decision in Ariad v. Lilly, analyze court treatment since Ariad, and outline best practices for meeting the written description requirement and withstanding challenges.

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Outline

  1. Written description requirement
    1. Purpose and scope
    2. What is required by Section 112
    3. Application of the requirement
  2. Lesson learned after Ariad v. Lilly
    1. Brief review of Ariad v. Lilly
    2. Impact of the decision
      1. on patent prosecution
      2. for predictable arts
      3. for non-predictable arts
      4. for the written description
      5. on patent litigation
    3. Treatment by other courts
  3. Best practices to meet the written description requirement

Benefits

The panel will review these and other key questions:

  • How is the Ariad decision being applied by the courts—and what has its impact been on patent prosecutions?
  • What are the implications of Ariad for the predictable and non-predictable arts?
  • What steps can counsel for patentees take to meet the written description requirement and withstand invalidity challenges based on the written description?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

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

Annemarie Hassett
Annemarie Hassett

Partner
Goodwin Procter

She is a member of the firm’s patent litigation practice and focuses her practice on intellectual property...  |  Read More

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