Billion Dollar Patents: Building a Strong Patent Portfolio, Generating Value, Protecting IP

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, September 8, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide patent counsel on withstanding the challenges of today's U.S. patent system in the hopes of earning billions of dollars in revenue with U.S. patents, properly extending market exclusivities, and keeping competitors off the market with strong U.S. patents. The panel will offer best practices to solidify novelty, non-obviousness, enablement, and written description positions, as well as review success stories during due diligence to motivate the suitor to pay maximum dollars.
Faculty

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and trade secret issues, and post-grant trial proceedings at the USPTO, including inter partes review (IPR) and post grant review (PGR). He maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients. He also provides opinions and strategic guidance to clients on infringement, validity, enforceability, and clearance matters. His practice encompasses a range of technologies, including pharmaceuticals, biochemistry, polymers, small molecule chemistry, optics, and medical and analytic devices.

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Ms. Brougher is a patent attorney who focuses on all aspects of services related to patents in the areas of biotechnology, pharmaceuticals and medical devices, including patentability opinions, due diligence, patent drafting, domestic and foreign patent prosecution, development and management of patent portfolios, and general client counseling during all phases of a product’s lifecycle, from concept to commercialization.
Her patent experience covers a variety of complex and innovative inventions involving small molecule drugs, biologics, cell-based technologies, compositions, drug formulations and drug delivery systems, immunotherapeutics, medical devices, diagnostic tests, nanotechnology, and immunology, particularly vaccines and antibodies. Ms. Brougher also has experience counseling clients on the Hatch-Waxman Act and is monitoring developments involving biosimilars under the Biologics Price Competition and Innovation Act.
Description
Companies and inventors are always looking to make their inventions the next big thing. A triumphant invention needs more than just a patent. It requires vigilance and a clear path to achieve success. Inventors and their counsel need to be able to take advantage of the tools that are available to them. They can also learn from how others have patented their inventions and the paths they have taken to make them billion-dollar patents.
There are principles of power to employ and traps to avoid on the way to obtaining strong and enforceable U.S. patents, which will hold up in post-grant proceedings and litigation. The things that counsel should consider are how to minimize risks from inequitable conduct, unclean hands, and other pernicious acts; how to position the client's patents in due diligence to maximize return; and drafting and prosecuting patents to be valid and enforceable. Understanding how to create and manage IP assets that will withstand changes and generate value is critical.
Listen as our authoritative panel of patent attorneys discusses withstanding the challenges of today's U.S. patent system in the hopes of earning billions of dollars in revenue with U.S. patents, properly extending market exclusivities, and keeping competitors off the market with strong U.S. patents. The panel will offer best practices to solidify novelty, non-obviousness, enablement, and written description positions and review success stories during due diligence to motivate the suitor to pay maximum dollars.
Outline
- Lessons from success stories
- How to draft pharma patents to withstand challenges and avoid booby traps
- How to defend patents against challenges at PTAB and in district court proceedings
Benefits
The panel will review these and other high profile issues:
- How to minimize risks from inequitable conduct and unclean hands and other pernicious act
- How to position your client's patents in due diligence to maximize return
- Drafting and prosecuting pharma patents to be valid and enforceable
- Using the patent estate strategically to extend the date of loss of patent exclusivity
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