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 premium CLE webinar with Q&A

Conducted on Tuesday, July 26, 2016

Recorded event now available

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Course Materials

This CLE course 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.


To satisfy the written description requirement, counsel must ensure that the application conveys “‘with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention,’ … and demonstrate that by disclosure in the specification of the patent.” Carnegie Mellon Univ. (Fed. Cir. 2008) — see also Ariad Pharm. (Fed. Cir. 2010) and Hynix Semiconductor Inc. (Fed. Cir. 2011).

Listen as our authoritative panel of patent attorneys drills down into the changes in case law interpreting the written description requirement. The panel will outline how to satisfy the requirement in drafting and prosecuting pharmaceutical and chemical patent applications, particularly for future licensing opportunities, AIA post-grant proceedings, and federal district court litigation.



  1. Written description requirements
  2. Court treatment
  3. Best practices for preparing and prosecuting the application—written description
    1. Describe representative number of species
    2. Identify physical or chemical characteristics common to the claimed genus
    3. Avoid functionally defined genus claims


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


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

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

Dr. Li Feng, Ph.D.
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

Amanda K. Murphy, Ph.D.
Amanda 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

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