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, April 26, 2004

About

Your company's patents are arguably its greatest assets. Those assets are, however, of a limited duration. It is a constant challenge to restock your patent portfolio with newly issued patents which bar others - at least for a time - from "making, using, offering for sale, selling or importing" your invention. The ability to protect and restock this portfolio ultimately determines your company's worth. Today, however, reach-through claims and research tool patents have made it increasingly difficult for the pharmaceutical, biotech and chemical industries to decide where research dollars should even be invested at the outset. In this litigious and uncertain environment, just how do you ensure that your company has freedom to operate in a particular area?

With millions of dollars in future revenue at stake and the threat of litigation, it is critical that patent counsel and executives for pharmaceutical, biotech and chemical companies and their advisors are competent to correctly determine whether there truly is freedom to operate.

This American Conference Institute publication on Freedom to Operate 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. They 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
  • 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 inventions or biotechnology. The latter will give you an insider's view as to when to rely on your own in-house opinion and when to seek a second opinion from outside counsel.

This comprehensive and unique program will give you the information that you need from those who have mastered the art of making these determinations for the pharmaceutical, biotech and chemical industries.

Contents & Contributors

About

Your company's patents are arguably its greatest assets. Those assets are, however, of a limited duration. It is a constant challenge to restock your patent portfolio with newly issued patents which bar others - at least for a time - from "making, using, offering for sale, selling or importing" your invention. The ability to protect and restock this portfolio ultimately determines your company's worth. Today, however, reach-through claims and research tool patents have made it increasingly difficult for the pharmaceutical, biotech and chemical industries to decide where research dollars should even be invested at the outset. In this litigious and uncertain environment, just how do you ensure that your company has freedom to operate in a particular area?

With millions of dollars in future revenue at stake and the threat of litigation, it is critical that patent counsel and executives for pharmaceutical, biotech and chemical companies and their advisors are competent to correctly determine whether there truly is freedom to operate.

This American Conference Institute publication on Freedom to Operate 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. They 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
  • 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 inventions or biotechnology. The latter will give you an insider's view as to when to rely on your own in-house opinion and when to seek a second opinion from outside counsel.

This comprehensive and unique program will give you the information that you need from those who have mastered the art of making these determinations for the pharmaceutical, biotech and chemical industries.

Contents & Contributors

PLANNING AND CONDUCTING: AN EFFECTIVE FTO SEARCH
Michael S. Tuscan, Morgan, Lewis & Bockius LLP
Manya S. Deehr, Morgan, Lewis & Bockius LLP

ADDRESSING BLOCKING PATENTS
Daniel M. Becker, M.D., Fish & Neave

USING THE ON-SALE BAR TO PROTECT TRADE SECRET FTO
Seth Fidel, Neurogen Corporation

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.

THE PROGRAM IS SCHIZOPHRENIC: THIS TALK IS ACTUALLY TWO DIFFERENT TALKS
Robin M. Silva, Dorsey & Whitney
Catherine Kara, Medarex

OPINION LETTERS ON NON-INFRINGEMENT: WHAT IN-HOUSE COUNSEL NEEDS TO KNOW
Scott Piering, Cargill Inc.

WHEN SHOULD YOU GET AN OPINION FROM OUTSIDE COUNSEL? CONSIDERATIONS FOR PHARMACEUTICAL AND BIOTECHNOLOGY COMPANIES
Gavin T. Bogle, Wyeth

WHEN SHOULD YOU GET A SECOND OPINION? OPINION LETTERS AUTHORED BY OUTSIDE COUNSEL
Vickie Henry, Foley Hoag

PRIVILEGE WAIVER ISSUES ASSOCIATED WITH PATENT OPINIONS OF COUNSEL
Charlotte H. Copperthite, Copperthite & Associates, LLC
Marcus E. Sernel, Kirkland & Ellis

LESSONS FROM THE LITIGATION FRONT LINES: WILLFULNESS OPINIONS
Matthew Powers, Weil Gotshal & Manges LLP

LICENSING YOUR WAY OUT OF TROUBLE
Judith A. Hasko, Cooley Godward

INFRINGEMENT: REMEDIES AND DAMAGES
Mark Pals, Kirkland & Ellis

DRAFTING THE NON-INFRINGEMENT AND/OR INVALIDITY OPINION
Ann M. Caviani Pease, Dorsey & Whitney LLP



DOCUMENT TYPES: PRESENTATIONS AVAILABLE: 0