Inherency Doctrine in Patent Prosecution and Litigation
Navigating Court and USPTO Treatment, Proving Anticipation, Overcoming Inherency Rejection
Recording of a 90-minute premium CLE video webinar with Q&A
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.
Outline
- Inherent anticipation
- Treatment of inherent obviousness
- By the courts
- By the USPTO
- Proving inherent obviousness
- 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
Faculty
Dr. Paul W. Browning, Ph.D.
Partner
Finnegan Henderson Farabow Garrett & Dunner
Dr. Browning, Ph.D., is a first chair litigator focusing on patent litigation and appeals, primarily in the chemical... | Read More
Dr. Browning, Ph.D., is a first chair litigator focusing on patent litigation and appeals, primarily in the chemical and pharmaceutical areas, including Hatch-Waxman litigation. He has tried cases before judges in various U.S. district courts and has handled arbitrations and mediations. Dr. Browning also advises on patent portfolio strategy with an eye toward success in litigation. His broad litigation experience includes taking and cross-examining witnesses at trial, briefing and arguing dispositive motions, drafting appellate briefs, and arguing cases on appeal. Dr. Browning has also managed day-to-day litigation activities in actions involving multiple parties. In addition to his litigation practice, he advises clients on a variety of patent matters, including strategic development of their patent portfolios and coordination of prosecution and U.S. and foreign litigation strategy and related proceedings before the Patent Trial and Appeal Board (PTAB). Dr. Browning has been recognized as a litigation star by Benchmark Litigation and Managing Intellectual Property (MIP) named him as a notable practitioner in the District of Columbia. He frequently lectures on various topics in chemical patent law. Dr. Browning designed laser systems and conducted spectroscopy of small molecules while earning master’s and Ph.D. degrees at the University of Chicago.
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Adriana L. Burgy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the... | Read More
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. From a patent prosecution perspective, she has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios.
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