Pharma and Chemical Patent Applications: Meeting Written Description Requirement
Demonstrating Evidence of Possession of the Invention, Navigating the Guidelines, Maintaining Chain of Priority
Recording of a 90-minute CLE webinar with Q&A
This CLE webinar will provide guidance to patent counsel to ensure chemical and pharmaceutical patent applications meet the written description requirement. The panel will outline lessons for counsel from Federal Circuit and PTAB decisions. The panel will offer their perspectives and strategies to avoid challenges.
Outline
- Written description requirements
- Court treatment
- Best practices for preparing and prosecuting the application—written description
- Describe representative number of species
- Identify physical or chemical characteristics common to the claimed genus
- Avoid functionally defined genus claims
Benefits
Our panel will review these and other key issues:
- Guidelines for pharmaceutical application’s written description support, e.g., a novel drug substance, product, and method(s) of treatments and manufacture
- Preparing non-pharmaceutical, chemical application’s written description in support of a novel compound, composition, and methods of use and compound manufacture
- How a lack of written description support can be used in an AIA inter partes review before PTAB
- How a lack of written description support can be used before PTAB to attack claims by breaking the chain of priority to pre-AIA date benefit in an AIA post-grant review
Faculty
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
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.
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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
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.
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Dr. Li Feng, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner
Dr. Feng focuses her practice on patent litigation before U.S. district courts, post-grant proceedings before the... | Read More
Dr. Feng focuses her practice on patent litigation before U.S. district courts, post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, patent prosecution, opinions and counseling, and due diligence. Her technical experience spans a broad range of technologies including pharmaceutical, biotechnology, chemical, agriculture, nanotechnology, cosmetic, medical device, and metallurgy.
CloseAmanda K. Murphy, Ph.D.
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
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.
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