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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

    Tuesday, August 23, 2022

  • 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

This course is $0 with these passes:

CLE
ALL

This CLE webinar will guide patent counsel on preparing and providing non-infringement opinions for companies developing new products. The panel will drill down into what a competent non-infringement opinion should contain. The panel will outline best practices for drafting these opinions to reduce infringement risks.

Faculty

Shashank Upadhye
Partner
Upadhye Tang, LLP

Mr. Upadhye has one of the most recognizable brands in the world of brand and generic drug development. As the former chief in-house counsel at three leading pharmaceutical companies (Apotex, Inc., Sandoz-Novartis, and Eon Labs, Inc.) and as a division counsel for a medical device company (The Cook Group), he is known for spearheading innovative business and legal strategies to protect existing drug or device patents – or challenge those of a competitor. A prolific writer and frequent speaker, Mr. Upadhye is the author of dozens of articles and has spoken on topics dozens of times at key industry conferences nationally and internationally. Further, he writes the 1400+ page leading book on navigating complex U.S. laws of FDA brand/generic drug development: Generic Pharmaceutical Patent & FDA Law, now in its 13th Edition (2020). 

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Jeffrey L. Waters
Partner; Co-Chair of the Computer Science Practice Group
Cantor Colburn LLP

Mr. Waters concentrates his practice on drafting and prosecuting patents for mechanical and electrical innovations. In particular, he has experience with patent issues relating to GPS, Internet and e-commerce, semiconductor devices and processing methods, and telecommunications. While Mr. Waters’ practice focuses on patent drafting and prosecution, he also has experience with patent litigation, having defended multiple patent infringement lawsuits. Mr. Waters also has experience in conducting due diligence investigations and drafting opinions.

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Description

When developing a new product, avoiding infringing on existing patents is critical. To ensure this, it's essential to understand a competitor's patent portfolio. A non-infringement opinion examines the client's new product to other's patents and can defend against assertions of willful patent infringement.

A competent non-infringement opinion should provide the legal landscape and the prosecution history of the patent in question. The opinion will analyze the claims in question and give an explanation and determination of non-infringement. When facing charges of infringement, the court can use the opinion when deciding whether there was any inappropriate action when the product was developed.

Listen as our authoritative panel of IP attorneys discusses preparing and providing non-infringement opinions for companies developing new products. The panel will drill down into what a competent non-infringement opinion should contain. The panel will also outline best practices for drafting these opinions to reduce infringement risks.

Outline

  1. Use of non-infringement opinions
  2. Drafting non-infringement opinions
    1. Key considerations
    2. What to include
  3. Communication with clients and implications for litigation
  4. Recent cases/court treatment
  5. Best practices for structuring non-infringement opinions

Benefits

The panel will review these and other key issues:

  • What are the benefits of obtaining non-infringement opinions? What are the risks?
  • What are best practices for patent counsel when analyzing infringement issues and structuring opinions?
  • What considerations should be kept in mind when communicating information with the client?