Patent Term: The Impact of Recent Cases for Addressing Insights for Prosecution and Litigation (RECORDING)
This webinar will help patent owners and their counsel navigate both patent prosecution and litigation issues related to patent term by drawing on insights from three recent Federal Circuit decisions: Novartis AG v. Ezra Ventures LLC, Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, and Supernus Pharmaceuticals, Inc. v. Iancu. Some commentators believe that these decisions give patent owners a chance to obtain potentially lucrative extensions of patent term, and that they have reined in the scope of obvious-type double-patenting.
Ezra addresses what happens when one patent expires later than another related patent due to a patent term extension. Breckenridge deals with a scenario where one patent filed earlier expires later than another due to a 1995 law that changed the length of patent terms. Supernus limited the USPTO’s ability to reduce patent term adjustment (PTA) based on delays in prosecution.
Our panel has vast experience with issues relating to PTA and patent term extension (PTE). It includes an in-house counsel at a medical device manufacturer, a patent prosecutor in biotech and pharma, and a life science patent litigator who represents both innovator and challenger entities. They will discuss:
- Strategies for obtaining PTA/PTE at the USPTO, including deciding which of multiple patents covering a product are best suited for PTE
- How to try to avoid terminal disclaimers
- Options for applicants with pending patent applications
- The remaining threat of double-patenting challenges in litigation
- Jack Brennan, Fish & Richardson, P.C.
- Jeff Hohenshell, Medtronic, Inc.
- Nicholas Mitrokostas, Goodwin Procter, LLP
Fish & Richardson, P.C.
Jack Brennan is a principal in the New York office of Fish & Richardson P.C. His practice emphasizes patent prosecution, opinions, due diligence, and client counseling in the fields of biotechnology and pharmaceuticals. Several years ago, Jack successfully challenged the way the U.S. Patent and Trademark Office calculates Patent Term Adjustment for patents resulting from national stage filings under 35 U.S.C. 371. He holds a Ph.D. in genetics.
is a senior patent attorney at Medtronic. An experienced patent prosecutor and strategist, he has had success invalidating for double patenting several patents covering patient-monitoring systems that were asserted against Medtronic.
Goodwin Procter LLP
is a patent litigator and partner in Goodwin Procter’s IP Litigation group. Nick has extensive trial and PTAB experience representing clients in the pharmaceutical and biotechnology industries in patent and antitrust litigation. He represents both innovator and challenger entities, is an editor of the Biosimilars Reference Guide, and co-leads a biosimilars blog, www.bigmoleculewatch.com.