4th National Tactical and Practical Guide to

Freedom To Operate

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

Monday, October 24, 2005

About

Why You Can't Afford to Be Wrong in Determining Whether Your Company Has Freedom to Operate

A key determinate of a biotech, pharmaceutical or chemical company's future growth is its ability to be the first to explore new areas of research and to derive new and profitable processes, products and enhancements from this research. But often, other companies' patents can impede this mission. If researchers trespass on an existing patent, their companies could face exorbitant liability. To minimize risk and save significant resources, companies must make early, sound and competent determinations as to whether they have freedom to operate in a given area.

The key lies in the ability of counsel, executives and advisors to competently assess essential patent issues raised by ongoing research. They must be able to address the methodology for claim construction, the complexities of reach-through claims and research tool rights, and whether to rely on in-house opinions or seek a second opinion from outside counsel.

American Conference Institute's Freedom to Operate publication will give you in-depth case law analysis from leading in-house counsel and expert attorneys from the pharmaceutical, biotech and chemical sectors. They provide you with first-hand, practical and comprehensive information on:
  • Using recent case law to construe claims, evaluate written descriptions and draft opinions
  • Understanding the everyday impact of Festo on the preservation of freedom to operate
  • Applying Integra to your risk analysis regarding research tools and reach-through claims
  • Utilizing effective freedom to operate search strategies and analysis
  • Formulating global freedom to operate strategies
  • Allocating collaborators' rights and liabilities under the CREATE Act
  • Determining when Knorr mandates a second opinion
  • Preserving and waiving privilege and confidentiality in freedom to operate opinions
  • Avoiding willful infringement claims post-Knorr
  • Licensing your way out of trouble

Contents & Contributors

About

Why You Can't Afford to Be Wrong in Determining Whether Your Company Has Freedom to Operate

A key determinate of a biotech, pharmaceutical or chemical company's future growth is its ability to be the first to explore new areas of research and to derive new and profitable processes, products and enhancements from this research. But often, other companies' patents can impede this mission. If researchers trespass on an existing patent, their companies could face exorbitant liability. To minimize risk and save significant resources, companies must make early, sound and competent determinations as to whether they have freedom to operate in a given area.

The key lies in the ability of counsel, executives and advisors to competently assess essential patent issues raised by ongoing research. They must be able to address the methodology for claim construction, the complexities of reach-through claims and research tool rights, and whether to rely on in-house opinions or seek a second opinion from outside counsel.

American Conference Institute's Freedom to Operate publication will give you in-depth case law analysis from leading in-house counsel and expert attorneys from the pharmaceutical, biotech and chemical sectors. They provide you with first-hand, practical and comprehensive information on:
  • Using recent case law to construe claims, evaluate written descriptions and draft opinions
  • Understanding the everyday impact of Festo on the preservation of freedom to operate
  • Applying Integra to your risk analysis regarding research tools and reach-through claims
  • Utilizing effective freedom to operate search strategies and analysis
  • Formulating global freedom to operate strategies
  • Allocating collaborators' rights and liabilities under the CREATE Act
  • Determining when Knorr mandates a second opinion
  • Preserving and waiving privilege and confidentiality in freedom to operate opinions
  • Avoiding willful infringement claims post-Knorr
  • Licensing your way out of trouble

Contents & Contributors


"BAFFLED" NO LONGER CLAIM CONSTRUCTION AFTER PHILLIPS
Daniel M. Becker, Dechert LLP

WRITTEN DESCRIPTION AND FREEDOM TO OPERATE OPINIONS
Lisa A. Haile, DLA Piper Rudnick Gray Cary

THE CONTINUING IMPACT OF FESTO ON NON-INFRINGEMENT OPINIONS
Albin James Nelson, Schwegman, Lundberg, Woessner & Kluth

INTEGRA'S AFTERMATH: THE IMPACT OF RESEARCH TOOL PATENTS AND REACH THROUGH CLAIMS ON FTO DETERMINATIONS
M. Patricia Thayer, Heller Ehrman LLP

EFFECTIVE FREEDOM TO OPERATE SEARCH STRATEGIES AND ANALYSIS
David A. Gay, Ph.D., McDermott Will & Emery LLP

INTERNATIONAL CONSIDERATIONS IN FREEDOM TO OPERATE: U.S. AND E.U. PERSPECTIVES
Karen Mangasarian, Fish & Neave IP Group, Rope & Gray LLP

GREAT ACT'S IMPACT ON THE COLLABORATIVE VENTURE'S FREEDOM TO OPERATE
David N. Lawson

INDUSTRY-ACADEMIC COLLABORATIONS
Scott R. Carter, Ph.D., California Institute of Technology

THE LIFE OF A FREEDOM TO OPERATE OPINION
Michelle Lewis, ZymoGenetics Inc.

PRIVILEGE AND CONFIDENTIALITY IN FREEDOM TO OPERATE OPINIONS: WHEN ARE THEY PRESERVED AND WHEN ARE THEY WAIVED?
Richard J. McCormick, Patterson, Belknap, Webb & Tyler LLP
Jeffrey I.D. Lewis, Patterson, Belknap, Webb & Tyler LLP
James Murdica, Patterson, Belknap, Webb & Tyler LLP

WILLFUL INFRINGEMENT POST-KNORR
Christian Chadd Taylor, Kirkland & Ellis LLP
Kenneth H. Bridges, Kirkland & Ellis LLP

LICENSING YOUR WAY OUT OF TROUBLE
David L. Hayes, Dorsey & Whitney LLP

PATENT INFRINGEMENT: REMEDIES AND DAMAGES
Mark A. Pals P.C., Kirkland & Ellis LLP

ANALYSIS, OPINION WRITING, AND STRATEGIES FOR MINIMIZING RISKS IN THE PHARMACEUTICAL, BIOTECH AND CHEMICAL INDUSTRIES
Joyce L. Morrison, Xencor, Inc.
Robin M. Silva, Dorsey & Whitney


DOCUMENT TYPES: PRESENTATIONS AVAILABLE: 0