Double Patenting: Defeating Rejections and Avoiding Terminal Disclaimers




About the Course:

Double patenting occurs when a patent applicant seeks to receive two patents on the same invention in the same jurisdiction. The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. Consequences of double patenting can include examiner rejection, post-grant review, the imposition of terminal disclaimers and allegations of patent invalidity in litigation.

If you don’t know the answers to questions such as these, you really should listen to this webinar:

    • Where does the intersection of double patenting and inequitable conduct lie?
    • How does the America Invents Act impact double patenting?
    • What double patenting safe harbors are afforded under Section 121?
    • Do extensive and diffuse patent families present greater risks of becoming subject to double patenting allegations?
    • When necessary, should patent applications be formally or casually abandoned?
    • What are the distinctions between obviousness under 35 U.S.C. S103 and non-statutory double patenting?
    • What are exceptions to claims of an earlier patent being considered for determining obviousness-type double patenting?
    • What are the differences in one-way and two-way tests used to negate obviousness in double patenting?
    • Can an earlier-issued patent be rejected for obvious type double patenting?
    • How are patent term adjustments calculated?
    • How can patent applicants maximize patent life granted by way of patent term adjustments?
    • Can patent term adjustments overcome terminal disclaimers?
    • What can be done if a patent applicant disagrees with the USPTO’s calculation of patent term adjustment?
    • What is the impact of requests for continued examinations on patent term adjustment calculations?

The following are among the cases discussed in detail:

  • Boehringer Ingelheim Int’l GmbH v. Barr Laboratories, Inc.
  • Sun Pharmaceutical Industries, Ltd. v. Eli Lilly and Co.
  • Geneva Pharms., Inc. v. GlaxoSmithKline PLC
  • Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.
  • Eli Lilly v Teva Parenteral Medicines, Inc.
  • In re Metoprolol Succinate Litigation
  • Research Corp. Technologies, Inc. v. Gensia Laboratories, Inc.
  • Brigham & Women’s v. Teva Pharms. USA, Inc.
  • Abbott Labs. v. Lupin Ltd.
  • Exelixis, Inc. v. Kappos

Course LeadersThomas L. Irving, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Tom Irving has nearly 40 years of experience in the field of intellectual property law in Finnegan’s D.C. and Brussels offices. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement, enforceability, and validity analysis in the chemical/pharmaceutical fields, as well as litigation. He has been involved as lead counsel in numerous patent interferences, reissues, and reexaminations, and has also served as an expert witness in patent litigation.

Amanda K. Murphy, Associate, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Amanda Murphy focuses her practice on client counseling and patent prosecution for a range of clients including small start-up companies, research foundations, and large pharmaceutical companies. Dr. Murphy prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the Patent Trial and Appeal Board of the U.S. Patent Trademark Office (PTAB) (formerly the U.S. Board of Patent Appeals and Interferences). She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.

Donna M. Meuth, Associate General Counsel, Eisai Inc. Donna has a diverse experience in Intellectual Property Law, including patent portfolio management, patent prosecution and litigation. Donna’s technical focus is in the pharmaceutical, chemical and biotechnology arts. She has significant interference experience and litigation experience, in particular ANDA litigation for branded pharmaceuticals.

Course Length: Approx. 1.5 hours


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