The USPTO Extends its Ability to Limit Examination of Markush Claims

The USPTO Extends its Ability to Limit Examination of Markush Claims

Wednesday, May 21, 2014

We invite you to join other members of the local biotech and pharmaceutical industries for breakfast and a seminar discussion with Fish Principal Christine A. Goddard, Ph.D., who will discuss changes in the USPTO’s treatment of Markush claims since publication of the February 9, 2011 guidance memorandum relating to compliance with 35 U.S.C. 112, second paragraph.

Christine will provide an overview of the new Improper Markush Grouping rejection and discuss how the USPTO is using this “doctrine” not only to reject Markush-type claims relating to chemical compounds, but also to limit their examination. Perspectives on the USPTO’s authority or lack thereof for making these types of rejections will be discussed. Christine will also review how the USPTO is training its examiners to implement the Improper Markush Grouping rejection and suggest response strategies and other tactics for overcoming such rejections.
Christine A. Goddard, Ph.D.
Principal, Fish & Richardson
Wednesday, May 21
8:00 a.m. – 8:30 a.m. Registration and continental breakfast
8:30 a.m. – 9:30 a.m. Presentation
The speaker will remain available after the seminar for continuing discussion.

Location:
Fish & Richardson
Fan Pier at Northern Avenue
One Marina Park Drive
Boston, MA 02210