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

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Thursday, August 24, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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.
Faculty

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and trade secret issues, and post-grant trial proceedings at the USPTO, including inter partes review (IPR) and post grant review (PGR). He maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients. He also provides opinions and strategic guidance to clients on infringement, validity, enforceability, and clearance matters. His practice encompasses a range of technologies, including pharmaceuticals, biochemistry, polymers, small molecule chemistry, optics, and medical and analytic devices.

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.

Mr. Irving has 47 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.

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.
Description
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.
Outline
- Prosecution and specification statements in the application process
- Limitations, disclaimers
- Implications for parent or sibling applications
- Implications for litigation
- Recent decisions
- Best practices
Benefits
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?
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