A Tactical and Practical Guide to

FREEDOM TO OPERATE

Analysis, Opinion Writing, and Strategies for Minimizing Risks in the Pharmaceutical, Biotech, and Chemical Industries

Monday, November 10, 2003

About

It's always been a challenge to restock your company's patent portfolio with newly issued patents which bar others - at least for a time - from "making, using, offering for sale, selling or importing" your inventions. Today, however, reach-through claims and research tool patents have made it increasingly difficult to determine where and how research can be undertaken in the first place. With millions of dollars in future revenue at stake and the ever-present threat of litigation, it is critical that patent counsel and executives for pharmaceutical, biotech and chemical companies are competent to correctly determine whether there truly is freedom to operate in a given area of research.

This American Conference Institute publication will bring you thoughtful and targeted commentary and in-depth analysis from an outstanding faculty of leading in-house counsel from the pharmaceutical, biotech and chemical sectors and expert attorneys. It will provide you with practical and comprehensive information and insights from their own experiences on:
  • What options are available when faced with a blocking patent?
  • The impact of Festo and other recent case law on freedom to operate
  • Overcoming the obstacles of research tool patents and reach-through claims
  • The interplay of interference practice and freedom to operate
  • Communications with counsel and with R&D: what's afforded privilege and what's not
  • Defenses to launch against an accusation of willful infringement and how to limit your exposures in the worst case scenario
  • Strategies for effectively licensing your way out of trouble
In addition, there are two special focus sections on Search Strategies and Opinion Letters. The former will provide you with insights for that crucial first step of your freedom to operate determination regardless of whether you are dealing with pharmacological, chemical based or biotechnology inventions. The latter will give you an insider's view on when to rely on your own in-house opinion and when to seek a second opinion from outside counsel.

This comprehensive and unique publication will give you the information that you need to mastered the art of making these determinations for the pharmaceutical, biotech and chemical industries

Contents & Contributors

About

It's always been a challenge to restock your company's patent portfolio with newly issued patents which bar others - at least for a time - from "making, using, offering for sale, selling or importing" your inventions. Today, however, reach-through claims and research tool patents have made it increasingly difficult to determine where and how research can be undertaken in the first place. With millions of dollars in future revenue at stake and the ever-present threat of litigation, it is critical that patent counsel and executives for pharmaceutical, biotech and chemical companies are competent to correctly determine whether there truly is freedom to operate in a given area of research.

This American Conference Institute publication will bring you thoughtful and targeted commentary and in-depth analysis from an outstanding faculty of leading in-house counsel from the pharmaceutical, biotech and chemical sectors and expert attorneys. It will provide you with practical and comprehensive information and insights from their own experiences on:
  • What options are available when faced with a blocking patent?
  • The impact of Festo and other recent case law on freedom to operate
  • Overcoming the obstacles of research tool patents and reach-through claims
  • The interplay of interference practice and freedom to operate
  • Communications with counsel and with R&D: what's afforded privilege and what's not
  • Defenses to launch against an accusation of willful infringement and how to limit your exposures in the worst case scenario
  • Strategies for effectively licensing your way out of trouble
In addition, there are two special focus sections on Search Strategies and Opinion Letters. The former will provide you with insights for that crucial first step of your freedom to operate determination regardless of whether you are dealing with pharmacological, chemical based or biotechnology inventions. The latter will give you an insider's view on when to rely on your own in-house opinion and when to seek a second opinion from outside counsel.

This comprehensive and unique publication will give you the information that you need to mastered the art of making these determinations for the pharmaceutical, biotech and chemical industries

Contents & Contributors

FREEDOM TO OPERATE SEARCH FOR SEQUENCES
Anita Varma, Ropes & Gray
Weishi Li, Ropes & Gray

ADDRESSING POTENTIAL BLOCKING PATENTS
Elizabeth Stotland Weiswasser, Weil, Gotshal & Manges LLP

LEGAL STANDARDS FOR A NON-INFRINGEMENT OPINION: FESTO AND OTHER RECENT CASE LAW AFFECTING INFRINGEMENT AND CLAIM INTERPRETATION
Warren D. Woessner, J.D., Ph.D., Schwegman Lundberg Woessner & Kluth, P.A.

BIOMEDICAL RESEARCH AND PATENT PROTECTION: ASSESSING FREEDOM TO OPERATE
Mark A. Pals, Kirkland & Ellis
Bryan S. Hales, Kirkland & Ellis
Tiffany P. Cunningham, Kirkland & Ellis
Nicholas A. Poulos, Abbott Laboratories

FREEDOM TO OPERATE AND INTERFERENCES: STRUCTURE, CONCEPTS AND PITFALLS
Samuel B. Abrams, Pennie & Edmonds LLP

FREEDOM TO OPERATE OPINIONS PREPARED BY IN HOUSE COUNSEL
Karen Krupen, Aventis Pharmaceuticals

PRIVILEGE WAIVER ISSUES ASSOCIATED WITH PATENT OPINIONS OF COUNSEL
Charlotte H. Copperthite, Colgate-Palmolive Inc.
Marcus E. Sernel, Kirkland & Ellis

SUCCESSFULLY DEFENDING A WILLFUL INFRINGEMENT CLAIM
Richard S. Bullitt, Bayer Healthcare, LLC
Robert Isackson, Orrick Herrington & Sutcliffe

STRATEGIES FOR LICENSING YOUR WAY OUT OF TROUBLE
Brian V. Slater, Fitzpatrick, Cella, Harper & Scinto



DOCUMENT TYPES: PRESENTATIONS AVAILABLE: 0