Patent Law Institute 2020: Critical Issues & Best Practices

Breakout Session No. 4a: Prosecution – Recent Developments in Chemical, Pharma and Bio Patents*

View Segment Details

Patent prosecutors can learn much by understanding how patents they prosecute are scrutinized in litigation.  This hour will concentrate on cases from April 2019 to April 2020 arising in Federal District Courts and will include the following topics:

• Recent court cases dealing with patentable subject matter, as well as an update on the current PTO policy and implementation of recent cases
• Recent cases dealing with claim interpretation such as HZNP Medicines v. Actavis Labs, which deals with “consisting essentially of” language
• Review of Ajinomoto v. ITC.,Amgen v. Sandoz,UCB v. Watson Labs and Eli Lilly v. Hospira relating to infringement under the Doctrine of Equivalents and strategies to employ to obtain patents that can be effectively enforced against competitors
• The treatment of enablement and written description cases by District Courts and how this affects prosecution of patent applications
• Enablement and written description cases, including Idenix v. Gilead, and what patent prosecutors can do to minimize the chance of having patents invalidated on these grounds
• An update on cases relating to novelty and obviousness

Andrew Kessel*, Gerald M. Murphy, Jr.* 

Program ID: 300258

Breakout Session No. 5a: Prosecution – Recent PTAB Decisions for Chemical, Pharma and Bio Patents*

View Segment Details

This segment will concentrate on case studies from April 2019 to April 2020 arising at the PTO, including related appeals to the CAFC, and will address at least the following topics/cases:

• Explore enablement and written description cases and how such rejections are handled in different Art Units
• Understand the impacts of recent PTAB decisions on novelty and obviousness
• Discover claim construction rules for examination and PTAB trials and PTAB cases including Mylan v. Aventis which explains when a preamble of a method of treatment claim which recites an intended effect should be given patentable weight.

Gerald M. Murphy, Jr. (participating via Audio conference)

Program ID: 300259