Sect. 112 Indefiniteness in Chemical and Biotech Patent Claims
Drafting and Prosecuting Patent Claims That Will Hold Up Under Any Definiteness Standard
Recording of a 90-minute premium CLE webinar with Q&A
This CLE webinar will provide guidance to patent counsel on the impact of recent Federal Circuit and PTAB case law on daily patent practice. The panel will offer best practices to navigate pre- and post-issuance scrutiny for compliance with 35 U.S.C. §112(b).
Outline
- Understanding 35 U.S.C. §112(b) ("indefiniteness")
- Post-Nautilus caselaw
- Post-Packard/McAward caselaw
- Best practices for drafting and prosecuting strong patent claims that will hold up in litigation and before PTAB under any of the definiteness standards
Benefits
The panel will review these and other key issues:
- How do the decisions distinguish the USPTO’s standard and the court’s standard for indefiniteness?
- What are the implications of the post-Nautilus and post-Packard/McAward cases for patent counsel in drafting applications?
- What steps can counsel take to increase the likelihood that patent claims will survive in litigation and under PTAB 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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Amelia Feulner Baur, Ph.D
Founding Partner
McNeill Baur
Dr. Baur’s practice covers a broad spectrum of intellectual property issues, including patent preparation and... | Read More
Dr. Baur’s practice covers a broad spectrum of intellectual property issues, including patent preparation and prosecution, coordination of worldwide patent strategies, appeals to the Patent Trial and Appeal Board and the Court of Appeals for the Federal Circuit. She has extensive experience working with clients to develop effective patent strategies to meet business goals. This includes landscape analyses, due diligence investigations, and providing patentability, freedom-to-operate, infringement, and validity opinions. She has also led clients through inter partes review (IPR), reexaminations, interferences, and the settlement of patent disputes.
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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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