Obvious-Type Double Patenting and PTEs After Breckenridge Pharmaceutical and Ezra Ventures LLC Decisions

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Thursday, March 14, 2019

Recorded event now available

or call 1-800-926-7926
Program Materials

This CLE webinar will guide IP counsel for understanding double patenting. The panel will analyze recent court treatment, including two significant Federal Circuit decisions; offer best practices to defeat double patenting rejections and avoid terminal disclaimers; and provide specific language to consider if a terminal disclaimer must be filed.

Description

Obviousness-type double patenting (ODP) is nonstatutory and is intended to prevent an inventor from improperly extending a patent's life by having two patents on the same invention. ODP may arise between pending applications, between a patent and one or more pending applications, and between multiple patents, even if not owned by the same party.

On Dec. 7, 2018, the Federal Circuit brought some clarity to ODP in the context of pre-Uruguay Round Agreements Act (URAA) and URAA patents and applications. In Novartis AG v. Ezra Ventures LLC, the court held that ODP did not invalidate the otherwise valid patent term extension (PTE) granted under 35 U.S.C. Section 156.

In Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc., the court clarified that its holding in Gilead Sciences Inc. v. Natco Pharma Ltd.(Fed. Cir. 2014) (that a later-issued but earlier-expiring patent could invalidate an earlier-issuing but later-expiring patent for ODP) only applies to post-URAA patents.

In Breckenridge and Ezra, involving a pre-URAA patent and a post-URAA patent, the Federal Circuit cabined Gilead to circumstances where both the patent and the asserted reference patent are URAA. Importantly, the Federal Circuit definitively stated that ODP could not invalidate a validly obtained PTE.

Listen as our authoritative panel of patent attorneys examines ODP, including the impact of Breckenridge and Ezra and other recent decisions. The panel will offer best practices to defeat ODP rejections and avoid terminal disclaimers. Instead of a terminal disclaimer, arguments of separate patentability are an option. Arguments for separate patentability may be supported by carefully presented real-world objective evidence of patentability, such as commercial success, long-felt need, and failure of others.

READ MORE

Outline

  1. Recent court treatment
    1. Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical (Fed. Cir. Dec. 7, 2018)
    2. Novartis AG v. Ezra Ventures LLC (Fed. Cir. Dec. 7, 2018)
    3. Other recent decisions
  2. Implications of the recent decisions on ODP practice
  3. Best practices
    1. Defeating ODP rejections
    2. Avoiding terminal disclaimers

Benefits

The panel will review these and other key issues:

  • What is the scope of double patenting? How do the two recent Federal Circuit decisions impact the scope?
  • What steps can be taken to defeat double patenting rejections?
  • What are best practices to avoid terminal disclaimers?
  • How can practitioners craft terminal disclaimers with an eye towards patent litigation?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Burgy, Adriana
Adriana L. Burgy

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

MacAlpine, Jill
Jill K. MacAlpine, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,...  |  Read More

Other Formats
— Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include program handouts. To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

48 hours after event

$347

Download

48 hours after event

$347