Obviousness-Type Double Patenting and Terminal Disclaimers | CLE Course

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Course Details

Course Information

smart_display Format
On-Demand
signal_cellular_alt Difficulty Level
Intermediate
work Practice Area
Patent

Date & Time

event Date
Tuesday, July 2, 2024
schedule Time
1:00 p.m. ET./10:00 a.m. PT
timer Program Length
90 minutes

Credit Information

This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00

CLE

ALL

This CLE webinar will guide patent counsel on obviousness-type double patenting (ODP), including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and will offer best practices for addressing ODP and terminal disclaimers.

Faculty

Amanda K. Murphy

Partner

Finnegan Henderson Farabow Garrett & Dunner LLP

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.

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Thomas L. Irving

Partner

Marbury Law Group

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.

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Michelle E. O'Brien

Partner, Head of Life Sciences

Marbury Law Group

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.

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Description

Recently, two courts relied on the decision in In re Cellect, but landed on opposite sides of the fence. The appeal of one of those decisions, by Judge Andrews in Allergan U.S. Inc. v. MSN Labs. Pvt. Ltd., was recently argued, and it appears the decision on ODP may be heading for reversal.

Also affecting double patenting, the United States Patent and Trademark Office (USPTO) published on May 10, 2024, its proposed rule that would change current terminal disclaimer practices and could significantly impact prosecution strategy as well as the enforceability of these patents.

Under the proposed rule, terminal disclaimers will need to include an agreement that the patent would be unenforceable if the patent claim to which it is tied is found to be invalid or unpatentable and appeals have been exhausted. Amongst the bar representing patentee, this proposal is very unpopular.

Listen as our authoritative panel of patent attorneys examines ODP, including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and will offer best practices, such as safe harbor/election/restriction and two-way test for ODP, for addressing ODP and terminal disclaimers.