About
A Tactical and Practical Guide to Today's Most Complex Issues
The human genome has been mapped and patented. Science now stands on the threshold of deciphering the mysteries of the proteins that manipulate and control gene function. As new and amazing genomic and proteomic discoveries continue to be made, biotech and pharmaceutical companies are seeking to patent the tools and processes which have allowed them and continue to allow them to unlock the secrets of genetic defects and disease in their quest to develop new drugs and therapies. Moreover, based on the number of infringement actions filed this year alone, they are clearly holding no bars to protect the biotech inventions on which they already hold patents.
With millions in future revenue at stake, it is imperative that counsel to biotech and pharmaceutical companies and their advisors have an up-to the minute and complete understanding of the latest legal developments affecting biotech patents. This
American Conference Institute conference presented thoughtful and targeted commentary and in-depth analysis from an outstanding faculty of leading in-house biotech and pharmaceutical counsel and expert attorneys. They provided practical, comprehensive information and insights on:
- Significant case law and actions to watch
- How pending reforms for pharmaceutical patents may affect biotech patents
- Strategies for patenting and defending reach-through claims
- Understanding and mastering the Written Description Guidelines
- How to draft claims broad enough and specific enough to adequately protect your biotech related inventions
- The impact of the new standards for utility and enablement on patenting gene and protein function and genomic and proteomic sequences
- Successful licensing: tips and traps in view of recent developments
- How to conduct a freedom to operate analysis in the evolving biotech patent landscape
This is by far the most comprehensive program of the year on biotech patents. Take this opportunity to get the information that you need from those on the leading edge of law and science.
Contents & Contributors
THE SCOPE OF PROTECTION UNDER THE "SAFE HARBOR" PROVISION
OF THE HATCH-WAXMAN ACT AND THAT OF FOREIGN COUNTERPARTS; APPLICABILITY OF SECTION 271 (e) (1) TO RESEARCH TOOL PATENTS;
AND APPLICABILITY OF SECTION 271 (g) TO TECHNICAL DATA
Brian D. Coggio, Orrick, Herrington & Sutcliffe
THE EVOLVING LAW OF CLAIM CONSTRUCTION
Maggie Kanter, Genzyme
SURVEY OF CASE LAW AND PENDING ACTIONS AFFECTING
BIOTECH PATENTS
Kathleen Madden Williams, Palmer & Dodge
FESTO IN LIGHT OF THE FEDERAL CIRCUIT'S
EN BANC HEARING:
WHERE ARE WE NOW?
Alex Chachkes, Orrick, Herrington & Sutcliffe, LLP
Scott B. Familant, Orrick, Herrington & Sutcliffe, LLP
CURRENT LEGISLATIVE INITIATIVES IMPACTING BIOTECH PATENT RIGHTS
Elizabeth Stotland Weiswasser, Covington & Burling
FOCUS ON RESEARCH TOOLS/METHOD PATENTS
Jane T. Gunnison, Fish & Neave
DEFENSES TO INFRINGEMENT OF RESEARCH TOOL PATENTS UNDER
35 USC § 271(e) (1)
Barry S. White, Frommer, Lawrence & Haug
DEFENSES TO INFRINGEMENT OF RESEARCH TOOL PATENTS UNDER
35 U.S.C. 271 (g)
Stephen B. Maebius, Foley & Lardner
RESEARCH TOOL PATENTS: JUDICIAL REMEDIES
Donald R. Ware, Foley, Hoag & Eliot, LLP
THE PROBLEM WITH RESEARCH TOOL PATENTS
Barbara A. Gyure, Palmer & Dodge
Steven B. Kelber, Piper Rudnick
PATENTABILITY OF "REACH-THROUGH" CLAIMS: U.S., EUROPEAN
AND JAPANESE PATENT OFFICE PERSPECTIVES
Richard J. Berman, Arent Fox
US TREATMENT OF REACH-THROUGH CLAIMS AND REACH-THROUGH
ROYALTIES
Frank P. Grassler, GlaxoSmithKline
THE LAW OF WRITTEN DESCRIPTION IN PHARMACEUTICAL AND
BIOTECHNOLOGY PATENTS
Joseph M. Manak, Greenberg Traurig LLP
INSULIN, INTERFERON, AND EPO: A DECADE OF WRITTEN DESCRIPTION
IN BIOTECHNOLOGY PATENTS
Charles Weiss, Kenyon & Kenyon
BREADTH OF CLAIM ISSUES
Paul M. Booth, Ph.D., Heller Ehrman
BREADTH OF CLAIM ISSUES: HOW BROAD CAN YOU GO?
Seth Fidel, Neurogen Corporation
ENABLEMENT – HISTORY AND STATISTICS
Maurice M. Klee, Ph.D., J.D., Attorney at Law
THE CURRENT STATE OF THE ART WITH RESPECT TO THE USPTO'S
APPLICATION OF THE "REVISED" UTILITY GUIDELINES
Diana Hamlet-Cox, Ph.D., J.D., Incyte Genomics, Inc.
James E. Hopenfeld, Fish & Neave
GENE HAPLOTYPES APPLICABILITY OF THE UTILITY GUIDELINES
Melodie W. Henderson, Genaissance Pharmaceuticals, Inc.
PROTEOMICS AND GENOMICS: MEETING UTILITY REQUIREMENTS
Kurt E. Richter, Morgan & Finnegan
STRATEGIES FOR SUCCESSFULLY LICENSING BIOTECH PATENTS IN
VIEW OF RECENT LEGAL DEVELOPMENTS
Stephen Johnson, Kirkland & Ellis
FREEDOM TO OPERATE: KEY CONSIDERATIONS FOR AN EVOLVING
LEGAL LANDSCAPE
David J. Earp, J.D., Ph.D., Geron Corporation