BarbriSFCourseDetails
  1. keyboard_arrow_leftBack

Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, November 28, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent counsel on the inherency doctrine in patent prosecution and litigation. The panel will examine how the courts and the USPTO have treated and are treating the issue. The panel will also discuss what it takes to prove anticipation by inherency and offer best practices for overcoming rejections based on inherency.

Faculty

Adriana L. Burgy
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

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. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio
Paul W. Browning
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman proceedings, and on appeal. His litigation experience includes taking and cross examining witnesses at trial, briefing and arguing dispositive motions, drafting appellate briefs, and arguing cases on appeal. He has also managed day-to-day litigation activities in actions involving multiple parties. In addition, he advises clients on patent matters, including coordination of prosecution and U.S. and foreign litigation strategy.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio

Description

While inherent anticipation is well recognized and generally well understood, the same cannot be said for inherency in obviousness. Inherent obviousness continues to cause problems for courts, at the USPTO with patent examiners, and for patent applicants.

There has been a growing number of reversals by the federal courts for improper inherent obviousness findings. Those cases demonstrate the disconnect between the Federal Circuit's position regarding the inherency doctrine in obviousness and misapplication of the USPTO and lower courts' doctrine.

Patent counsel should understand the positions of the Federal Circuit and the USPTO to correctly apply the inherency doctrine in anticipation and obviousness contexts when prosecuting patents and litigating them.

Listen as our authoritative panel of patent attorneys examines the inherency doctrine in patent prosecution and litigation from both anticipation and obviousness perspectives. The panel will discuss how the courts and the USPTO have treated and are treating the issues. The panel will also discuss what it takes to prove anticipation by inherency versus in an obviousness context and offer best practices for overcoming rejections based on inherency.

Outline

  1. Inherent anticipation
  2. Treatment of inherent obviousness
    1. By the courts
    2. By the USPTO
  3. Proving inherent obviousness
  4. Best practices for overcoming rejections based on inherency

Benefits

The panel will review these and other key issues:

  • The Federal Circuit's and the USPTO's approach to the inherency doctrine and the disconnect between the two
  • Demonstrating using the inherency doctrine
  • Best practices for overcoming an inherency rejection