Recent Developments in Double Patenting: ODP Challenges and Considerations
Obviousness-type double patenting (ODP) is a judicially created doctrine which aims to prevent patent owners from improperly extending patent rights, by prohibiting the issuance of second patent claims that are not “patentably distinct” from the first patent claims. With possible landmines at each turn, patent owners are advised to review their patent portfolios in light of recent developments, and to carefully understand ODP jurisprudence, challenges and considerations to avoid risks and pitfalls.
In this LIVE Webcast, a panel of distinguished professionals and thought leaders brought together by The Knowledge Group will help patent owners and practitioners understand the important aspects of this significant topic. They will provide an in-depth discussion of ODP trends and developments. Speakers will also offer insights on how to best protect against ODP issues.
Key topics include:
- ODP – Trends and Developments
- Risks for Patent Owners
- Challenges and Considerations
- Recent Double Patenting Court Rulings
- Best Practices to Protect Against ODP Issues
Russell S. Timm, Ph.D., Of Counsel
Womble Bond Dickinson (US) LLP
- Preliminary considerations
- Obviating the rejection
- Requesting the rejection be withheld in abeyance
- Addressing the rejection on the merits
- Filing a terminal disclaimer
Carl A. Morales, Ph.D., Partner
- Evolution by the courts and the USPTO on the use of a patent’s disclosure in deciding ODP
- In re Baird (CCPA 1965) and In re Vogel (CCPA 1970)
- Geneva v. GSK (CAFC 2003) and Pfizer v. Teva (CAFC 2008)
- Sun v. Eli Lilly (CAFC 2010)
- AbbVie v. Kennedy Institute (CAFC 2014)
- current USPTO practice and examples
- best practices
Bonnie Weiss McLeod, Ph.D., Partner
- Recent developments in the case law relating to safe harbor under 121 and filing strategies, including:
- Gilead v. Natco – background
- Relevant developments in the case law post-Gilead v. Natco, including Magna Electronics, Janssen Biotech v. Celltrion, In re Janssen Biotech and Ex parte Sauerberg; and
- Current best practices in light of these recent decisions.
Who Should Attend:
- Patent Attorneys
- Patent Consultants
- Patent Litigators
- IP Counsel
- IP Attorneys & Consultants
In collaboration with both US and foreign colleagues, Russ has prosecuted patent applications in more than forty national and multinational patent offices. Russ has significant experience with patenting therapeutic antibodies and antibody-drug conjugates, but also works on a wide variety of other technologies. In addition to obviousness-type double patenting issues, Russ also has a particular interest and expertise in the areas of patent-eligible subject matter, patent term adjustment, and the differences in patent prosecution in countries around the world.
In collaboration with both US and foreign colleagues, Russ has prosecuted patent applications in more than forty national and multinational …
Carl A. Morales, Ph.D. is a registered patent attorney in the Patent Counseling and Prosecution practice of Dechert’s Intellectual Property group. Dr. Morales applies his scientific and legal training toward acquiring, protecting, and managing the patent rights of a variety of clients in the biotechnology, chemistry, pharmaceutical and medical device industries.
Dr. Morales has prepared and prosecuted patent applications in the U.S. Patent and Trademark Office and numerous foreign patent offices. His practice also includes pre-litigation case assessments; preparing patentability, validity, infringement, and enforcement opinions; and due diligence evaluations. Dr. Morales is experienced in post-grant patent proceedings when product-critical patents are at stake, such as reissues, reexaminations, and European oppositions. Dr. Morales has also performed patent term adjustment, patent term extension, and Orange Book listing investigations for pharmaceutical products and prepared corresponding opinions and petitions.
Prior to joining Dechert in 2012, Dr. Morales represented pharmaceutical clients in patent infringement litigation, particularly matters arising under the Hatch-Waxman Act.
Dr. Morales holds a Ph.D. in synthetic organic chemistry from Harvard University, where his doctoral research included designing and completing the first total synthesis of the anti-leukemia natural product Longithorone A as well as developing new stereoselective chemical reactions for organic synthesis.
Carl A. Morales, Ph.D. is a registered patent attorney in the Patent Counseling and Prosecution practice of Dechert’s Intellectual Property …
Dr. Bonnie Weiss McLeod is a partner in Cooley’s Patent Counseling and Prosecution group. She specializes in serving the life sciences industry in the preparation and prosecution of biotechnology and pharmaceutical patent applications, conducting diligence including non-infringement, invalidity and freedom to operate analyses, and representing clients in front of the PTAB in relation to reexaminations, IPRs and interferences. She concentrates on counseling clients, ranging from nonprofits to biotech companies of all sizes, with regard to developing and maintaining a patent strategy that is consistent with business goals. Bonnie is a former patent examiner in the biotechnology group of the US Patent and Trademark Office. She holds a PhD in Molecular Biology.
Dr. Bonnie Weiss McLeod is a partner in Cooley’s Patent Counseling and Prosecution group. She specializes in serving the life …
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Method of Presentation:
Experience in patent law
NY Category of CLE Credit:
Areas of Professional Practice
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About Womble Bond Dickinson (US) LLP
Womble Bond Dickinson is a transatlantic law firm with more than 1,000 lawyers based in twenty seven offices in the US and UK. In addition to patent prosecution and other intellectual property, the firm provides core legal services to clients in a wide variety of sectors and practice areas. Womble Bond Dickinson is also a member of Lex Mundi, the world’s largest association of independent law firms, which offers clients access to quality local counsel in more than 120 countries.
About Dechert LLP
Dechert is a global specialist law firm.
Focused on sectors with the greatest complexities, legal intricacies and highest regulatory demands, we excel at delivering practical commercial judgment and deep legal expertise for high-stakes matters.
In an increasingly challenging environment, clients look to us to serve them in ways that are faster, sharper and leaner without compromising excellence.
We are relentless in serving our clients– delivering the best of the firm to them with entrepreneurial energy and seamless collaboration in a way that is distinctively Dechert.
About Cooley LLP
Cooley has 900+ lawyers across 13 offices in the United States, China and Europe. Clients partner with Cooley on transformative deals, complex IP and regulatory matters, and high-stakes litigation, where innovation meets the law. With a market-leading IP practice, Cooley has the largest life sciences patent team of any law firm in the US. The international team is comprised of 90+ patent lawyers and professionals across the US and UK.