About
Can Your Company Afford to Make the Wrong Freedom to Operate Determination?
Your company's ability to be the first to explore new areas of research and develop new, patentable, and profitable inventions derived from this research is a key determinate of its future growth and longevity. However, in the ongoing quest to be first, it is a constant challenge to determine which areas of new research are truly original and which should be pursued - let alone where precious research dollars should be spent. Today, the complexities of reach-through claims, and questionable rights to research tools such as tech-run assays have made these determinations even more difficult. Just how do you correctly determine if there truly is freedom to operate in a given area of research?
With millions of future dollars of revenue at stake and the constant threat of litigation, it is absolutely critical that patent counsel and executives for pharmaceutical, biotech and chemical companies and their advisors have the tools and knowledge that they need to make a sound and competent freedom to operate determination. American Conference Institute's Freedom to Operate publication will bring you thoughtful and targeted commentary and in-depth analysis from an outstanding faculty of leading in-house counsel and expert attorneys from the pharmaceutical, biotech and chemical sectors.
This publication will provide you with practical and comprehensive information on:
• The on-going impact of Festo and the significance of recent cases such as Phillips, Integra and Knorr on your freedom to operate determination
• How to thoroughly analyze and evaluate the integrity of search results
• Overcoming the obstacles of research tool patents and reach through claims
• Minimizing risks relative to freedom to operate determinations in industry and university joint research ventures
• The impact of international patents and applications on domestic freedom to operate determinations
• Communications with counsel and R&D: what is afforded privilege and what is not?
• Winning defenses to willful infringement allegations and strategies for limiting your exposure in the worse case scenario
• How to effectively use licensing to off-set a law suit
About
Can Your Company Afford to Make the Wrong Freedom to Operate Determination?
Your company's ability to be the first to explore new areas of research and develop new, patentable, and profitable inventions derived from this research is a key determinate of its future growth and longevity. However, in the ongoing quest to be first, it is a constant challenge to determine which areas of new research are truly original and which should be pursued - let alone where precious research dollars should be spent. Today, the complexities of reach-through claims, and questionable rights to research tools such as tech-run assays have made these determinations even more difficult. Just how do you correctly determine if there truly is freedom to operate in a given area of research?
With millions of future dollars of revenue at stake and the constant threat of litigation, it is absolutely critical that patent counsel and executives for pharmaceutical, biotech and chemical companies and their advisors have the tools and knowledge that they need to make a sound and competent freedom to operate determination. American Conference Institute's Freedom to Operate publication will bring you thoughtful and targeted commentary and in-depth analysis from an outstanding faculty of leading in-house counsel and expert attorneys from the pharmaceutical, biotech and chemical sectors.
This publication will provide you with practical and comprehensive information on:
• The on-going impact of Festo and the significance of recent cases such as Phillips, Integra and Knorr on your freedom to operate determination
• How to thoroughly analyze and evaluate the integrity of search results
• Overcoming the obstacles of research tool patents and reach through claims
• Minimizing risks relative to freedom to operate determinations in industry and university joint research ventures
• The impact of international patents and applications on domestic freedom to operate determinations
• Communications with counsel and R&D: what is afforded privilege and what is not?
• Winning defenses to willful infringement allegations and strategies for limiting your exposure in the worse case scenario
• How to effectively use licensing to off-set a law suit
Contents & Contributors
RECENT CASES AFFECTING FREEDOM TO OPERATE DETERMINATIONS
Daniel A. Scola, Jr., Hoffmann & Baron LLP
Jamie M. Larmann, Hoffmann & Baron LLP
Christina L. Warrick, Hoffmann & Baron LLP
THE CONTINUING IMPACT OF FESTO ON NON-INFRINGEMENT OPINIONS
Warren D. Woessner, Schwegman Lundberg Woessner & Kluth
STRATEGIES FOR EFFECTIVE FREEDOM TO OPERATE DETERMINATIONS
Gloria Fuentes, Ropes & Gray
Anita Varma, Ropes & Gray
RESEARCH TOOL PATENTS CONSIDERATIONS FOR PHARMACEUTICAL AND BIOTECHNOLOGY COMPANIES
Gavin Bogle, Wyeth
SHRINKING HARBOR IN A STORM: THE STATE OF THE LAW ON EXEMPTIONS FROM PATENT INFRINGEMENT
Robert Issackson, Orrick Herrington & Sutcliffe
INDUSTRY-ACADEMIA COLLABORATIONS
Matthew D. Smith, Pennsylvania State University
INTERNATIONAL CONCERNS IN FREEDOM TO OPERATE DETERMINATIONS
Karen Mangasarian, Ph.D., J.D., Fish & Neave IP Group, Ropes & Gray LLP
FREEDOM TO OPERATE OPINIONS PREPARED BY IN-HOUSE COUNSEL
Karen Krupen, Ph.D., JD., Sanofi-Aventis
WHEN SHOULD YOU GET A SECOND OPINION? OPINION LETTERS AUTHORED BY OUTSIDE COUNSEL
Kathleen Madden Williams, Ph.D., J.D., Palmer & Dodge
SUCCESSFULLY DEFENDING AGAINST A WILLFUL INFRINGEMENT CLAIM
Henry Hadad, Schering Plough Corporation
PRIVILEGE AND CONFIDENTIALITY IN FREEDOM TO OPERATE OPINIONS: WHEN ARE THEY PRESERVED AND WHEN ARE THEY WAIVED?
Jeffrey I.D. Lewis, Patterson, Belknap, Webb & Tyler LLP
Richard McCormick, Patterson, Belknap, Webb & Tyler LLP
James Murdica, Patterson, Belknap, Webb & Tyler LLP
STRATEGIES FOR LICENSING YOUR WAY OUT OF TROUBLE
Eric A. Dichter, Johnson & Johnston / Centocor, Inc.
INFRINGEMENT: REMEDIES AND DAMAGES
Marc Sernel, Kirkland & Ellis
OPINION DRAFTING WORKSHOP
Karen Krupen, Ph.D., JD., Sanofi-Aventis
Kathleen Madden Williams, Ph.D., J.D., Palmer & Dodge
Barbara A. Gyure, Palmer & Dodge
MASTER CLASS ON DRAFTING A LEGALLY SOUND OPINION ON INVALIDITY AND NON-INFRINGEMENT IN A POST-KNORR WORLD
Barbara A. Gyure, Palmer & Dodge
Gavin Bogle, Wyeth
Ralph A. Loren, Palmer & Dodge
WILLFUL INFRINGEMENT AFTER KNORR
Gavin Bogle, Wyeth
Publication Details