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 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.
Outline
- How §112 arises in IPRs
- Types of §103 nonobviousness declaration
- How to decide when to use experts/prosecution declarations
- Use of prosecution declarations in POPR
- Cautionary notes about using experts/prosecution declarations
Benefits
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?
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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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
Mr. Stroud focuses on the interplay between Patent Trial and Appeal Board (PTAB), district court, and International Trade Commission (ITC) litigation. He manages Unified Patents’ IPR portfolio, district court, and appeals work. He has litigated, examined, prosecuted, counseled, and handled patent disputes. Involved in some of the earliest America Invents Act (AIA) patent challenges, he has drafted, filed, and represented clients on covered business method (CBM) and inter partes reviews (IPRs) for both patent owners and petitioners, drafting several petitions, responses, and motions.
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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
Dr. Li focuses her practice on U.S. and international patent prosecution in the pharmaceutical and chemical areas. Her experience includes managing world-wide patent portfolios for important pharmaceutical companies. Her practice also includes patent litigation, due diligence investigations, patentability/infringement opinion drafting, and client counseling. Before joining the firm, she worked as a senior/principal medicinal chemist in a biopharmaceutical company and has an in-depth understanding of pharmaceutical chemistry and concepts concerning bioavailability. She applies her background by working with expert witnesses.
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