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 video webinar with Q&A
This CLE course will guide patent counsel to ensure chemical and pharmaceutical patent applications meet the written description requirement, outline lessons for counsel from Federal Circuit and PTAB decisions, and offer their perspectives and strategies to avoid challenges.
Outline
- Written description requirements
- Recent court treatment
- Best practices for preparing and prosecuting the application: written description
- Describe a representative number of species
- Identify physical or chemical characteristics common to the claimed genus
- Avoid functionally defined genus claims
Benefits
The panel will review these and other key issues:
- Guidelines for the pharmaceutical application's written description support, e.g., a novel drug substance, product, and method(s) of treatments and manufacture
- Preparing non-pharmaceutical, the 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 post-grant 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 proceeding
- PTAB cases analyzing the written description requirement with respect to proposed substitute claims in motions to amend
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. Mr. Irving 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. From a patent prosecution perspective, she has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios.
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Dr. Amanda K. Murphy, Ph.D.
Partner
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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Dr. Li Feng, Ph.D.
Partner
Finnegan Henderson Farabow Garrett & Dunner
Years of doctoral and industry research on chemical sciences give Dr. Feng a practical understanding of the... | Read More
Years of doctoral and industry research on chemical sciences give Dr. Feng a practical understanding of the innovation process, which she applies across the broad range of technologies she works with, including pharmaceutical, biotechnology, medical device, chemical, agriculture, nanotechnology, cosmetic, and metallurgy. She practices patent litigation before U.S. district courts, post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), patent prosecution, opinions and counseling, and due diligence. Her technical experience spans a broad range of technologies, including pharmaceutical, biologics, biotechnology, medical device, chemical, agriculture, nanotechnology, cosmetic, and metallurgy.
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