Broadcast Date: Tuesday, February 25, 2025
from 12:00 pm to 1:30 pm (ET)
Overview:
In today’s evolving patent landscape, understanding obviousness-type double patenting (ODP) is critical to securing and maintaining strong intellectual property rights. The Federal Circuit’s evolving case law in the URAA era from Gilead to Novartis, and most recently Cellect and Allergan has significant implications for patent protection strategies.
Join our speakers in this CLE webcast as they explore the latest developments in double patenting jurisprudence and share strategic insights to mitigate risks and optimize patent prosecution. The discussion will cover proactive measures such as removing unnecessary terminal disclaimers before issuance, leveraging patent term extension (PTE), and addressing the risk of ODP to patent term adjustment (PTA). It will also highlight key prosecution strategies, IP portfolio audits to identify potential ODP challenges, and the use of reissue applications to correct PTA-related vulnerabilities.
Key topics to be discussed:
- Background of double patenting and Federal Circuit case law (Gilead, Novartis, Cellect, Allergan)
- Preemptive strategies to avoid unnecessary terminal disclaimers
- ODP implications on PTA and PTE protection
- Holistic prosecution approaches to mitigate ODP risks
- Best practices for auditing IP portfolios and addressing ODP challenges
- Reissue applications as a tool for patents with PTA
- Global IP strategy considerations for US national stage entry
- Decision-making authority in licenses and collaboration agreements
Credit:
Course Level:
Intermediate
Advance Preparation:
Print and review course materials
Method of Presentation:
On-Demand Webcast
Prerequisite:
General knowledge of patent laws
Course Code:
1411285
Total Credit:
CLE Credit:
CA CLE 1.50 General - Approved Until: 2/25/2027
PA CLE 1.50 General - Approved Until: 2/25/2027
VT CLE 1.50 General - Approved Until: 12/31/2026
NJ CLE 1.50 General - Credits through Reciprocity
NY CLE 1.50 Areas of Professional Practice - Credits through Reciprocity
AR CLE 1.50 General - Credits through Reciprocity
CT CLE 1.50 General - Credits through Reciprocity
NH CLE 1.50 General – Meets the requirements of NH Supreme Court Rule 53
MO CLE 1.50 General - Approved Until: 2/25/2025
Pending CLE Application:
GA, TN, WI
Self-Apply:
AL, CO, DE, FL, ID, IL, IN, IO, KS, KY, LA, NC, ME, MN, MS, MT, NE, NV, NM, ND, OH, OK, OR, SC, TX, UT, VA, WA, WV, WY
If you’d like us to apply for CLE, you may opt to pay the CLE processing fee here.
No MCLE Requirements:
DC, MD, MA, MI, SD
Not Eligible for CLE:
AK, AZ, HA
How to Claim CLE Credits Per State:
https://knowledgewebcasts.com/how-to-claim-cle-credits-per-state/
CLE State Requirements:
https://knowledgewebcasts.com/cle-state-requirements/
CPE State Requirements:
Speaker Panel:
Robert W. Bahr, Partner
Maier & Maier, PLLC
Mr. Bahr is a Partner at Maier & Maier PLLC. Mr. Bahr is an authority on patent laws, rules, and examining procedure, and his expertise includes post-issuance proceedings at the United States Patent Office (USPTO), advising attorneys and clients on complex patent prosecution matters, patent litigation strategy, and USPTO patent policy, practice and procedure.
Mr. Bahr previously served as the Deputy Commissioner for Patent Examination Policy at the USPTO, and was involved in numerous patent-related rule-makings, including implementation of the American Inventors Protection Act of 1999 and the Leahy-Smith America Invents Act. Mr. Bahr was awarded two Department of Commerce Gold Medals and two Department of Commerce Bronze Medals.
Deborah H. Yellin, Partner
Crowell & Moring LLP
Deborah H. Yellin is a partner at Crowell & Moring’s Washington, D.C. office, specializing in patent procurement, intellectual property portfolio management, and U.S. Patent and Trademark Office post-grant proceedings. She advises on Patent Term Extensions and manages global patent portfolios for diverse clients. She has notable experience in Hatch-Waxman and BPCIA cases, securing significant victories in IPR challenges. Admitted to the District of Columbia and Virginia State Bars, and registered with the USPTO.
Alice Ho, Ph.D., Senior Associate
Arnold & Porter Kaye Scholer LLP
Dr. Alice Ho is an intellectual property attorney with Arnold & Porter in Washington, D.C. With a focus on biotechnology, medical device, pharmaceutical, and life sciences companies, Dr. Ho’s practice includes patent prosecution, handling matters before the Patent Trial and Appeal Board, Hatch-Waxman litigation, and other litigation before Federal District courts, as well as advising on the intellectual property aspects of transactions. Dr. Ho received her Ph.D. from The Johns Hopkins University School of Medicine. She has been recognized by LMG Life Sciences and Legal 500, and she is an active member of the PTAB Bar Association, serving as a Committee Vice Chair of the Women’s Committee.
Agenda:
Robert W. Bahr, Partner
Maier & Maier, PLLC
- Background of double patenting
- The Federal Circuit case law on double patenting in the URAA era is evolving (Gilead – Novartis, Cellect – Allergen):
- Remove any unnecessary terminal disclaimer before the patent issues (PTO will not permit removal after patent grant).
Alice Ho, Ph.D., Senior Associate
Arnold & Porter Kaye Scholer LLP
- Implications of Federal Circuit cases on ODP practice and consequences of these cases on building patent protection
- Holistic prosecution approach to avoid pitfalls
- Leveraging PTE protection
Deborah H. Yellin, Partner
Crowell & Moring LLP
- ODP risk to PTA and child applications
- Auditing IP portfolios to determine potential ODP challenges
- Global IP strategy for US national stage entry
- Decision making authority over prosecution in licenses and collaboration agreements
- Loper Bright
- Patent legislation
Date & Time:
Tuesday, February 25, 2025
12:00 pm to 1:30 pm (ET)
Who Should Attend:
- IP Attorneys & Consultants
- Patent Attorneys
- Patent Consultants
- Patent Litigators
- IP Counsel
- Other Related/Interested Professionals
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