Obviousness-Type Double Patenting: Navigating the Ever-Evolving Landscape
The emergence of new court rulings in the U.S. and Canada continues to shape the applicability and scope of the obviousness-type double patenting (ODP) doctrine, which is meant to prevent patentees from unjustly extending patent rights by owning multiple patents on the same invention. Recently, the U.S. Court of Appeals for the Federal Circuit issued two significant decisions - Novartis AG v. Ezra Ventures LLC and Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc. - which provide guidance on when ODP does not invalidate patent term extensions (PTEs). In Canada, where there is no terminal disclaimer, upcoming changes to the Patent Rules will impact procedures commonly used to prevent double patenting.
Counsel to patent applicants and owners should be in the know of the recent court rulings and other developments involving ODP to better manage potential threats and opportunities regarding patent term and validity.
This LIVE Webcast produced by The Knowledge Group will provide patent practitioners with an in-depth analysis of the evolving ODP landscape in the USA and Canada. They will examine the implications of recent U.S. Court rulings in Ezra and Breckenridge and other ODP updates while offering insights on how to best protect a client’s interests from significant ODP issues in the U.S. and Canada.
Some of the major topics that will be covered in this course are:
- Recent Court Rulings:
- Novartis AG v. Ezra Ventures LLC
- Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc.
- Implications of Recent Trends and Developments
- Managing Potential Threats and Opportunities
- Best Practices and Strategies
John P. Isacson, Partner
Pepper Hamilton LLP
- Origin of double patenting
- Effects of double patenting law
- Recent developments in double patenting: the Gilead and Novartis cases
Blaine M. Hackman, Ph.D., Associate
- Second Prong of Obviousness-Type Double Patenting (“ODP”): Harassment by Multiple Assignees
- Importance of Maintaining Common Patent ownership
- Limited Applicability for the Two-Way Obviousness Test
- Use of a Patent’s Specification in Deciding ODP
- When It Is Permissible to Reference a Patent Specification to Support ODP
- Recent Patent Prosecution Appeals
Jennifer Ledwell, PhD, Associate
Marks & Clerk Canada
- 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
John P. Isacson is a partner in the Intellectual Property Department of Pepper Hamilton LLP. Mr. Isacson focuses on representing clients in the pharmaceutical, biotechnology, chemical and medical device industries in all patent-related matters. His clients include internationally recognized research and health care institutions, emerging ventures, investors and large public corporations. Mr. Isacson has particular experience in strategic counseling and patent portfolio management, infringement litigation, due diligence, inter partes and post-grant reviews, reexaminations, patent interferences, inventorship and ownership disputes, matters involving biosimilar products, and Hatch-Waxman issues. He is regularly involved in litigation, arbitrations and U.S. Patent and Trademark Office and International Trade Commission proceedings. He has also advised on related FDA matters for certain technologies. He can be reached at firstname.lastname@example.org.
John P. Isacson is a partner in the Intellectual Property Department of Pepper Hamilton LLP. Mr. Isacson focuses on representing …
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 18 years of experience working with patents.
Jennifer’s enthusiasm for patents stems from her strong scientific background. 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 expressed in the inner ear and the immune system.
Jennifer’s patent practice is primarily in the areas of biotechnology, pharmaceuticals, and chemistry. She has been a registered Canadian Patent …
Blaine M. Hackman Ph.D. currently focuses his practice on patent counseling, prosecution, and post-grant proceedings, including Inter Partes Reviews (IPRs) and Post-Grant Reviews (PGRs) before the Patent Trial and Appeal Board (PTAB), in the areas of pharmaceuticals and biotechnology. Dr. Hackman has represented pharmaceutical and biotechnology clients in intellectual property litigation (including Hatch-Waxman proceedings) and post-grant proceedings on behalf of petitioners and patent owners. He has also prosecuted patents and counseled clients in transactions in a variety of technologies, including small molecule and protein therapies, nanotechnology, diagnostic imaging, and analytical chemistry.
Dr. Hackman has published and presented on intellectual property-related issues, including Obviousness-Type Double Patenting, and he was recognized for authoring an Article of the Month by the Licensing Executive Society International Journal, les Nouvelles. He has also been recognized as a Rising Star by Super Lawyers in their intellectual property category in 2017-2019.
Blaine M. Hackman Ph.D. currently focuses his practice on patent counseling, prosecution, and post-grant proceedings, including Inter Partes Reviews (IPRs) …
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Method Of Presentation:
General knowledge of patent laws
NY Category of CLE Credit:
Areas of Professional Practice
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About Pepper Hamilton LLP
Pepper Hamilton LLP counsels each client as if it were our only client. With more than 425 lawyers in 14 offices across the United States, we use the unique skills and talents of our people, the breadth of our practices, and the depth of our experience to deliver powerful solutions to clients’ legal and business issues. Our Intellectual Property Department helps our clients protect and commercialize their intellectual property assets while minimizing the risk of liability. We assist companies with the full gamut of intellectual property matters, including patents, copyrights, trademarks, trade secret protection, unfair competition, privacy, and technology-related transactions. We also recognize that IP is a vital part of any company’s asset portfolio, and, when conflicts arise, we work to efficiently resolve disputes through litigation or alternative methods.
About Marks & Clerk Canada
Marks & Clerk is recognised as one of the world’s leading specialists in intellectual property. Through a global network of over 650 people worldwide including a qualified team of experienced 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 Dechert LLP
Dechert is a leading global law firm with 26 offices around the world. We deliver deep legal expertise and practical commercial judgment for high-stakes matters in sectors with the greatest complexities, intricacies and regulatory demands.
Dechert is organized by practice area, not geography. This approach allows us to deliver a team responsive to unique project requirements and provide the resources needed to complete work with speed-to-market execution. Our lawyers understand the current marketplace, as well as rapidly evolving commercial and regulatory challenges, making us a preeminent full-service advisor.
We are a global, mobile workforce of diverse skills and areas of expertise. We use a project management approach to our workflow, enabling us to quickly adapt to changing client needs, maximize technology, drive efficiency and deliver value to our clients.