Leveraging Experts for USPTO Prosecution and PTAB

Developing Strong Patentability Records to Strengthen Claims Against IPR and PGR Challenges

Recording of a 90-minute premium CLE 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, November 12, 2015

Recorded event now available

or call 1-800-926-7926
Course Materials

This CLE course will provide guidance for patent counsel on leveraging the use of experts in patent prosecution and at the PTAB to develop and strengthen patentability records. The panel will offer best practices on of how and when to use experts in patent prosecution to strengthen claims against inter partes review (IPR) and post-grant review (PGR) challenges.


In the past, the trend was for lean and clean file histories because unnecessary statements or submissions in patent prosecution potentially led to patent claims having an unnecessarily narrow construction and created more points of attack for inequitable conduct. Now, in the post-AIA world of post-grant proceedings, patent owners may want to reconsider whether less is still more in a specification and/or file history.

Solid evidentiary showings and/or expert declarations, in addition to on-point and compelling legal arguments, may help to develop strong patentability records. Prudently establishing such records during prosecution could support a patent owner’s efforts to withstand an IPR or PGR challenge.

Submission of this evidence during prosecution requires careful thought and planning. Evidence or a declaration thrown together in haste, or otherwise considered defective, may be harmful rather than helpful. Additionally, inequitable conduct is still alive and well post-Therasense. Since inequitable conduct cannot be raised during an IPR or PGR, there is apparently no estoppel precluding a losing IPR or PGR petitioner from raising inequitable conduct in subsequent litigation.

Carefully considered declarations putting more in the record during prosecution may benefit the patent in the face of an IPR or PGR challenge. Consider solid and compelling arguments and/or declarations during prosecution supporting §112 positions and §103 positions.

As it stands now, in the Patent Owner Preliminary Response (POPR), the patent owner cannot “present new testimony evidence beyond that already of record.” But, to defeat institution, the patent owner should be able in the POPR to rely on declarations setting forth §112 and §103 positions originating from the prosecution or even from other publicly available documents (as in Anova Food L.L.C. v. Leo Sandau and William R. Kowalski, IPR2013-00114 and Omron Oilfield & Marine Inc. v. MD/TOTCO, A Division of Varco L.P., IPR2013-00265). A POPR also allows the patent owner to show PTAB how the intrinsic evidence completely supports the patent owner’s desired claim construction.

Listen as our authoritative panel of patent attorneys discusses best practices for practitioners of how and when to use experts in patent prosecution to strengthen claims against IPR and PGR challenges.



  1. How §112 arises in IPRs
  2. Types of §103 nonobviousness declaration
  3. How to decide when to use experts/prosecution declarations
  4. Use of prosecution declarations in POPR
  5. Cautionary notes about using experts/prosecution declarations


The panel will review these and other key issues:

  • How can practitioners use experts during prosecution to strengthen the patent application against the threat of post-grant challenges?
  • How can practitioners leverage expert declarations in the POPR?
  • How can practitioners introduce strong grounds for patentability under §§103 and 112 in the prosecution history so that IPRs and PGRs are either denied or ineffective against the challenged claims?


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

Jonathan R.K. Stroud
Jonathan R.K. Stroud

Chief Patent Counsel
Unified Patents

Mr. Stroud focuses on the interplay between Patent Trial and Appeal Board (PTAB), district court, and International...  |  Read More

Wen Li, Ph.D.
Wen Li, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Li focuses her practice on U.S. and international patent prosecution in the pharmaceutical and chemical areas. Her...  |  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