BarbriSFCourseDetails
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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, February 20, 2020

  • 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 course will examine the on-sale and public use bars to patentability/validity and the impact of the AIA on these statutory bars. The panel will also discuss recent court treatment and offer best practices to minimize the risk of patent ineligibility or invalidation.

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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Barbara Clarke McCurdy
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular focus on patent litigation, patent counseling, and contested patent proceedings before the U.S. Patent and Trademark Office (USPTO). She has been lead trial counsel in patent cases in the U.S. district courts, appeals before the Federal Circuit, Section 337 investigations at the U.S. International Trade Commission, and contested proceedings at the USPTO.

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Description

There have been significant Federal Circuit decisions in recent years on on-sale and public use bars to patentability. For example, in Helsinn Healthcare v. Dr. Reddy’s Labs (2019), the Supreme Court issued its first interpretation of the AIA on-sale bar standard for "secret" sales and "secret" offers-for-sale, concluding that as long as the sale was public, the sale was an invalidating event, even if the details of the invention could not be determined from the sale. In The Medicines Co. v. Hospira, Inc., 881 F.3d 1347 (Fed. Cir. 2018), the Federal Circuit reiterated the principle of "no supplier exception" to the on-sale bar. Barry v. Medtronic, 914 F.3d 1310 (Fed. Cir. 2019), provides an analysis of what the "ready for patenting" prong of Pfaff means for on-sale and public use of a method of treatment claim.

Patent counsel must understand the on-sale and public use bars and how courts have treated them under both AIA and pre-AIA law. Counsel should carefully guide patent applicants to avoid any on-sale activity or other conduct that would preclude patent protection. Counsel may need to move quickly to take corrective action, considering the implications of both AIA post-grant review and district court cases.

Listen as our authoritative panel of patent attorneys examines the on-sale and public use bars to patent eligibility and recent court treatment of these statutory bars. The panel will also offer best practices to minimize the risk of having a patent deemed ineligible or invalidated due to the on-sale and public use bars.

Outline

  1. On-sale bar
    1. Pre-AIA
    2. Under the AIA
    3. Implications of the AIA
    4. Recent court treatment
  2. Public use bar
    1. Pre-AIA
    2. Under the AIA
    3. Implications of the AIA
    4. Recent court treatment
  3. Best practices

Benefits

The panel will review these and other key issues:

  • How did the AIA impact the on-sale bar and the public-use bar?
  • Recent court and PTAB treatment of the on-sale bar and the public-use bar.
  • What best practices can counsel employ to adapt patent prosecution and enforcement strategies?