Third Advanced Forum on

BIOTECH PATENTS

The Tactical and Practical Guide to Today's Most Complex Issues

Monday, March 29, 2004

About

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 genomic and proteomic discoveries continue to be made, biotech and pharmaceutical companies are seeking to patent the tools and processes which are allowing them to unlock the secrets of genetic defects and disease. And, based on the increasing number of infringement actions filed each year, 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 newly updated American Conference Institute publication on Biotech Patents brought you 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 and legislation to watch
  • How to draft claims broad enough and specific enough to adequately protect your biotech related invention
  • Understanding and mastering the Written Description Guidelines
  • Strategies for patenting and defending reach-through claims
  • Untangling the complexities of inherent anticipation
  • The impact of the new standards for utility and enablement on patenting gene and protein function and genomic and proteomic sequences
  • Successful licensing your biotech invention: tips and traps in view of recent developments
  • How to conduct a freedom to operate analysis and draft soundly reasoned opinions in the evolving biotech patent landscape
A highlight of the publication will be a special Focus on the Infringement of Research Tool/Method Patents: An Examination of Defenses, Remedies and Preventative Measures in Light of Recent Decisions. This will shed light on recent decisions regarding infringement of research tools/method patents and provide you with tips for avoiding infringement while protecting and developing your own biotech and related inventions.

Contents & Contributors

About

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 genomic and proteomic discoveries continue to be made, biotech and pharmaceutical companies are seeking to patent the tools and processes which are allowing them to unlock the secrets of genetic defects and disease. And, based on the increasing number of infringement actions filed each year, 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 newly updated American Conference Institute publication on Biotech Patents brought you 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 and legislation to watch
  • How to draft claims broad enough and specific enough to adequately protect your biotech related invention
  • Understanding and mastering the Written Description Guidelines
  • Strategies for patenting and defending reach-through claims
  • Untangling the complexities of inherent anticipation
  • The impact of the new standards for utility and enablement on patenting gene and protein function and genomic and proteomic sequences
  • Successful licensing your biotech invention: tips and traps in view of recent developments
  • How to conduct a freedom to operate analysis and draft soundly reasoned opinions in the evolving biotech patent landscape
A highlight of the publication will be a special Focus on the Infringement of Research Tool/Method Patents: An Examination of Defenses, Remedies and Preventative Measures in Light of Recent Decisions. This will shed light on recent decisions regarding infringement of research tools/method patents and provide you with tips for avoiding infringement while protecting and developing your own biotech and related inventions.

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 SECTION 271(g) AND THE IMPORTATION OF DATA
Brian D. Coggio, Orrick, Herrington & Sutcliffe LLP

SURVEY OF CASE LAW AND PENDING ACTIONS AFFECTING BIOTECH PATENTS
Frank P. Porcelli, Fish & Richardson P.C.
Jennifer A. Tegfeldt, Genzyme Corporation

FESTO IN LIGHT OF THE FEDERAL CIRCUIT'S EN BANC RULING: WHERE ARE WE NOW AND WHERE ARE WE GOING
Scott Familant, Orrick Herrington & Sutcliffe

BIOTECH/PHARMA LEGISLATIVE UPDATE
Beth A. Burrous, Ph.D., J.D., Foley Lardner

FOCUS ON RESEARCH TOOL/METHOD PATENTS
Jane T. Gunnison, Fish & Neave

35 U.S.C. 271(g) AND THE IMPACT OF BAYER v. HOUSEY
Nicholas Groombridge, Weil, Gotshal & Manges LLP
Rekha Ramani, Weil, Gotshal & Manges LLP

DEFENSES TO INFRINGEMENT OF RESEARCH TOOL PATENTS
Gavin T. Bogle, Wyeth

JUDICIAL REMEDIES FOR INFRINGEMENT OF RESEARCH TOOL PATENTS
Donald R. Ware, Foley Hoag LLP

THE PROBLEM WITH RESEARCH TOOL PATENTS
Steven B. Kelber, Piper Rudnick

PATENTABILITY OF "REACH-THROUGH" CLAIMS
Richard J. Berman, Arent Fox

THE WRITTEN DESCRIPTION REQUIREMENTS FOR PATENTABILITY
Charles A. Weiss, Kenyon & Kenyon

CLAIM CONSTRUCTION TRENDS
Sandra A. Bresnick, Weil, Gotshal & Manges LLP

THE ACCIDENTAL AND INHERENT ANTICIPATION DOCTRINE: WHERE ARE WE STAND AND WHERE ARE WE GOING?
Anne Brown, Ph.D., Athersys, Inc.
Mark Polyakov, Athersys, Inc.

DOUBLE PATENTING
Peter F. Corless, Edwards & Angell LLP

BREADTH OF CLAIM ISSUES
Paul M. Booth, Ph.D., Heller Ehrman White and McAuliffe

BREADTH OF CLAIMS: HOW BROAD CAN YOU GO?
Jennifer Gordon, Ph.D., J.D., Orrick, Herrington & Sutcliffe LLP

BREADTH OF CLAIM ISSUES: HOW BROAD CAN YOU GO IN BIOTECHNOLOGY PATENTS?
Elizabeth A. Howard, Ph.D., Orrick, Herrington & Sutcliffe LLP
Rowena Young, Orrick, Herrington & Sutcliffe LLP

SNPs & HAPLOTYPES: APPLICABILITY OF THE UTILITY GUIDELINES
Melodie W. Henderson, Genaissance Pharmaceuticals, Inc.

THE UTILITY REQUIREMENT AND THE PATENTABILITY OF NUCLEIC ACID SEQUENCES
David K. Barr, Kaye Scholer LLP

EXPLOITING BIOTECH RESEARCH TOOL PATENTS AND REACH THROUGH ROYALTIES: OPPORTUNITIES AND LIMITATIONS
Gerald Sobel, Kaye Scholer LLP

FREEDOM TO OPERATE AND OPINION LETTERS: KEY CONSIDERATIONS FROM THE IN-HOUSE AND OUTSIDE COUNSEL PERSPECTIVE
Kathleen Madden Williams, Ph.D., J.D., Palmer & Dodge LLP
Rafael E. Rosado, J.D., Palmer & Dodge LLP

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



DOCUMENT TYPES: PRESENTATIONS AVAILABLE: 0