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Course Details

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

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

  1. Prosecution and specification statements in the application process
    1. Limitations, disclaimers
    2. Implications for parent or sibling applications
    3. Implications for litigation
  2. Recent decisions
  3. 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?