Patent Protection and Bypass Continuation Applications: Evaluating Benefits and Risks, Navigating Priority
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Monday, October 7, 2024
- 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 webinar will guide patent counsel on the use of bypass continuation applications. The panel will discuss the advantages of using the application along with the potential risks. The panel will also offer best practices for using the bypass application and navigating the process.
For over 25 years, Ms. Mueller has provided strategic counsel on complex patent issues to clients in the pharmaceutical, biopharmaceutical, biotechnology, and chemistry sectors. She brings in-depth knowledge and extensive experience to her work, advising clients on the global patent protection, freedom to operate, and validity of blockbuster drugs they aim to produce and distribute. With a background in chemistry and biology, she provides advice on the full spectrum of global intellectual property portfolio management, including patent prosecution, opposition, and other post-grant proceedings, and diverse regulatory matters. Since 2001, she has worked closely with in-house legal departments of global pharmaceutical firms regarding their patent development and enforcement strategies. In this partnership, Ms. Mueller provides training to new in-house counsel. She meets with scientists and other business development to anticipate and resolve a wide array of problems, including navigation of FDA approval. A thought leader on pharmaceutical and biopharmaceutical patent law, Ms. Mueller frequently speaks to legal and industry groups and publishes widely.
Dr. Landau is a seasoned Patent attorney with 18+ years of legal experience and doctoral level training in environmental/industrial microbiology. As a Shareholder in the Firm’s Intellectual Property Group, he focuses his practice on patent drafting, patent prosecution, managing international patent portfolios, providing legal analysis and opinions, and brand protection and enforcement. Dedicated to intellectual property law and the advancement of biological science, he is active in the biotechnology industry, serving as a board member of BIO Alabama, former Chair of the AIPLA Biotechnology Committee, and an Adjunct Professor of Law at Cumberland School of Law.
Ms. Simmons’s practice includes strategic and business-oriented intellectual property counseling, patent preparation and prosecution, diligence, and opinions of counsel in the areas of pharmaceuticals and chemistry. She has particular experience with the preparation and prosecution of US and foreign patents involving small molecules including molecular glues, enantiomers/diastereomers, isotopologues, polymorphs, and prodrugs, for use as immunotherapies, antibiotics, cannabinoid receptor agonists, and anti-cancer drugs. Ms. Simmons also has significant experience with secondary patenting strategies to manage life cycle and maximize brand exclusivity, including method of use, process, solid form, formulation, and combination therapy patents, and patents involving assays and devices for use within the pharmaceutical industry.
There are two routes into the U.S. from the Patent Cooperation Treaty (PCT)--national stage application under Section 371 and “bypass” continuation under Section 111. Patent applicants may claim priority to a PCT by filing a national phase application under Section 371. Alternatively, a regular national application filed under Section 111(a), as a continuation or divisional U.S. application of a PCT application (known as a “bypass” application), may get the filing date of an international application designating the United States. The application's filing date is important because it may be cited as prior art and impact an argument against Section 103 rejection.
If an applicant modifies or refines an invention that is the subject of the originally filed PCT application, they can use a bypass continuation to add the more recent developments.
Timing is essential as the bypass continuation application must be filed while the PCT application is pending within 30 months of the PCT priority date. If a new matter is added, the applicant may want to file early to avoid prior art issues.
Listen as our authoritative panel of patent attorneys examines the bypass application. The panel will discuss the advantages of using the application along with the potential risks. The panel will also offer best practices for utilizing the bypass application and navigating the process.
- Bypass application
- Advantages
- Potential risks
- Bypass traps
- Navigating the process
- Best practices for using the bypass application
The panel will review these and other key issues:
- What are the benefits of and reasons to use the bypass continuation applications?
- What are the potential risks of filing a bypass application?
- When determining whether to use a bypass application, what factors should patent practitioners consider?
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