Double Patenting: Defeating Rejections and Avoiding Terminal Disclaimers
$295
About the Course
Double patenting occurs when a patent applicant seeks to obtain two patents on the same invention in the same jurisdiction. The doctrine of double patenting
prevents unjustified extension of patent exclusivity beyond the statutory term.
Consequences of double patenting may include examiner rejection, post-grant review, terminal disclaimers, and allegations of patent invalidity during litigation.
If you do not know the answers to the following questions, this webinar is essential.
- •The intersection of double patenting and inequitable conduct
- •The impact of the America Invents Act on double patenting
- •Double patenting safe harbors under Section 121
- •Risks posed by large and diffuse patent families
- •When patent applications should be formally or informally abandoned
- •Distinctions between obviousness under §103 and non-statutory double patenting
- •Exceptions for earlier patents in obviousness-type double patenting
- •One-way versus two-way tests for negating obviousness
- •Whether earlier-issued patents can be rejected for obviousness-type double patenting
- •Calculation of patent term adjustments
- •Maximizing patent life through patent term adjustments
- •Whether patent term adjustments can overcome terminal disclaimers
- •Challenging USPTO patent term adjustment calculations
- •The effect of requests for continued examination on patent term adjustment
Cases discussed include:
- •Boehringer Ingelheim Int’l GmbH v. Barr Laboratories, Inc.
- •Sun Pharmaceutical Industries, Ltd. v. Eli Lilly and Co.
- •Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC
- •Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.
- •Eli Lilly v. Teva Parenteral Medicines, Inc.
- •In re Metoprolol Succinate Litigation
- •Research Corp. Technologies, Inc. v. Gensia Laboratories, Inc.
- •Brigham & Women’s Hospital v. Teva Pharmaceuticals USA, Inc.
- •Abbott Laboratories v. Lupin Ltd.
- •Exelixis, Inc. v. Kappos
Course Leaders
Thomas L. Irving
Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Mr. Irving has nearly 40 years of experience in intellectual property law,
including patent prosecution, reissue, reexamination, interferences,
Orange Book counseling, and litigation in the chemical and pharmaceutical fields.
Amanda K. Murphy
Associate, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Dr. Murphy focuses on patent prosecution and client counseling for start-ups, research foundations, and pharmaceutical companies, including PTAB appeals, reexaminations, and patent term extension matters.
Donna M. Meuth
Associate General Counsel, Eisai Inc.
Ms. Meuth has extensive experience in patent portfolio management, prosecution, and ANDA litigation in the pharmaceutical, chemical, and biotechnology arts.