Best Strategies to Avoid Double Patenting Rejections and Terminal Disclaimers: What You Need to Know
The obviousness-type double patenting (ODP) doctrine prevents an inventor from extending patent rights by prohibiting two patents for the same invention or obvious modifications of the same invention.
At present, ODP is non-statutory and may be overcome in the United States by filing a terminal disclaimer in the application or proceeding in which the rejection is made. However, several considerations must be carefully weighed before deciding to file a terminal disclaimer.
In contrast, terminal disclaimers are not available in Canada, and as a result, double patenting issues must be approached differently.
This LIVE Webcast produced by The Knowledge Group will help IP counsel understand double patenting practice in the US and Canada. The speaker will provide in-depth and analytical discussion of recent case laws and will offer best practices to avoid double patenting pitfalls and rejections.
Some of the major topics that will be covered in this course are:
- Understanding Double Patenting
- Double Patenting Rejections
- When and Where to File Terminal Disclaimers
- Recent Court Treatments
- Defeating Double Patenting Rejections
Joseph Reisman, Ph.D., Partner
Knobbe Martens Olson & Bear LLP
- Legal principles for double patenting practice in the United States
- Drafting and prosecution strategies to avoid double patenting
- Using terminal disclaimers to obviate double patenting rejections in the United States
- The safe harbor of 35 U.S.C. § 121 and the principle of consonance
- Terminal disclaimer practice and ramifications for patent term adjustments
Jennifer Ledwell, Ph.D., Patent Agent
Marks & Clerk
- Legal principles for double patenting practice in Canada
- Patent drafting and prosecution strategies to avoid double patenting
- Traps and pitfalls unique to Canada
Who Should Attend:
- IP Attorneys & Consultants
- Patent Attorneys
- Patent Consultants
- Patent Litigators
- IP Counsel
- Other Related/Interested Professionals
Jennifer’s patent practice is primarily in the areas of biotechnology, pharmaceuticals, and chemistry. She has been a registered Canadian Patent Agent since 2003 and has over 16 years of experience working with patents.
Prior to becoming a patent agent, Jennifer obtained a Bachelor of Science in 1990 with honours (summa cum laude) in Biochemistry from the University of Ottawa. She also obtained a Ph.D. from Stanford University in Molecular and Cellular Physiology, where she used electrophysiological techniques and mutagenesis to study cooperative interactions in voltage-gated potassium channel proteins. She then spent two years as a post-doctoral research fellow at Yale University, where she used transgenic mice to study the physiological role of a voltage-gated potassium channel protein.
Jennifer’s patent practice is primarily in the areas of biotechnology, pharmaceuticals, and chemistry. She has been a registered Canadian Patent …
Joseph Reisman is a partner in Knobbe Martens’ San Diego office. He obtained a B.S. and a Ph.D. in Chemistry at, respectively, Yale University and the University of California (San Diego), and a J.D. at the University of California (Berkeley). He served as a Law Clerk to Alan D. Lourie of the Court of Appeals for the Federal Circuit. His practice involves patent prosecution and strategic counseling, chiefly for pharmaceutical clients, developing and enforcing patent portfolios. He has also served as counsel for numerous generic pharmaceutical manufacturers, and has been instrumental in developing and implementing strategies for achieving early market
entry of generic products. He is also an adjunct professor at the University of San Diego, and a member of the Board of Directors of the Federal Circuit Bar Association.
Joseph Reisman is a partner in Knobbe Martens’ San Diego office. He obtained a B.S. and a Ph.D. in Chemistry …
Print and review course materials
Method of Presentation:
Experience in Patent Laws
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
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About Marks & Clerk
Marks & Clerk is recognised as one of the world’s leading specialists in intellectual property. With a global network of 800 people worldwide including a qualified team of seasoned patent and trademark associates, they are capable of offering a full spectrum of technical expertise on all aspects of intellectual property matters – patents, trademarks, designs and copyright. This includes obtaining protection worldwide, portfolio management, strategic advice, commercial advice, licensing, enforcement, clearance and searches, validity and infringement opinions, due diligence and litigation.
With their network of offices in Canada, Europe and Asia, and long-established relationships with other leading IP firms around the world, they are able to provide consistent high quality, seamless and cost-effective service to their clients both domestically and globally.
About Knobbe Martens Olson & Bear LLP
Knobbe Martens is an agent of innovation, with offices across California, as well as in New York, Seattle, and Washington, D.C. We provide clients worldwide with forward-focused Intellectual Property and Technology law service and representation. Knobbe Martens is one of the world’s largest Intellectual Property law firms, with more than 300 attorneys and scientists representing the complete spectrum of technologies and Intellectual Property practice areas. We combine unmatched technical and litigation expertise to deliver superior results in both transactional and contested matters, for both cutting edge start-ups and established Fortune 500 companies, in fields ranging from physics to pharmaceuticals and entertainment to engineering. For more information, please explore www.knobbe.com.