Interested in training for your team? Click here to learn more

Prosecution and Specification Statements: Implications for Patent Claim Construction in Parent and Sibling Applications and PTAB and District Court/Federal Circuit Litigation

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

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Thursday, August 24, 2023

Recorded event now available

or call 1-800-926-7926

This CLE webinar will guide patent counsel on the use of prosecution history and specification statements. The panel will discuss what this could mean for litigation and PTAB proceedings as well as parent and sibling patent applications. The panel will offer best practices for making prosecution and specification statements.


A recent decision from the District of Delaware serves as a reminder that caution should be used when providing a prosecution statement. In Azurity Pharms. Inc. v. Alkem Labs. Ltd. (D. Del. May 4, 2023), the court found that the prosecution history statements limited the claims.

During the prosecution of a patent, the applicant may portray the prior art and how it applies to the claim or define what a claim term means to overcome a rejection. Then when the patent is involved in litigation, the patentee may offer a different spin on the claim term to find infringement or to avoid invalidity. In these circumstances, the prosecution history may box in the patent litigation based on what it said earlier. The same can be said for specification statements.

Prosecution and specification statements may serve as a disclaimer by, for example, implying what the patent is not intended to cover. There may also be impact on parent or sibling patent applications.

Listen as our authoritative panel of patent attorneys examines prosecution and specification statements and their role in the applications process and litigation. The panel will offer best practices for making statements.



  1. Prosecution and specification statements in the application process
    1. Limitations, disclaimers
    2. Implications for parent or sibling applications
    3. Implications for litigation
  2. Recent decisions
  3. Best practices


The panel will review these and other key issues:

  • What are the potential hurdles when making a prosecution and/or specification statement?
  • What are the potential implications for litigation and PTAB proceedings? For parent or sibling applications?
  • What practical considerations should counsel keep in mind when making prosecution and specification statements?


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

Feldstein, Mark
Mark J. Feldstein, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and...  |  Read More

Irving, Thomas
Thomas L. Irving

The Marbury Law Group

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

O’Brien, Michelle
Michelle E. O'Brien

The Marbury Law Group

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video