5th National Patent Counsel's Forum on

Freedom To Operate

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

Monday, September 18, 2006

About

Your company's ability to be the first to explore new areas of research and develop new and profitable processes, products, and enhancements from these endeavours is a critical competency in its quest for profitability and business longevity. However, it is imperative that in your efforts to be first that you not trespass on another company's existing patents, thereby running the risk of ensuing - and costly - litigation. It is vital that you have the "know-how" to make early, sound, and competent business determinations as to whether you truly have freedom to operate in a given area.

You must be confident in your search strategies and analysis. You must know the status of pending patent applications and be able to assess whether these pending applications are impediments to your research.

There is one place you can equip yourself with the tools needed to overcome these uncertainties. The publication from the American Conference Institute's 5th National Patent Counsel's Forum on Freedom to Operate will bring you thoughtful and targeted commentary on the mechanics of making sound and competent freedom-to-operate determinations. ACI has gathered presentations from an outstanding faculty of leading in-house counsel and expert attorneys from the pharmaceutical, biotech, and chemical sectors. Have access to practical, and comprehensive information on how to:

  • Determine whether a patent is blocking and knowing your options if it is
  • Complete a claim construction analysis and present it
  • Patent application preparation & prosecution in a changing legal landscape
  • Anticipate how the doctrine of equivalents will be determined by a court of law
  • Assess the changing legal landscape on research tool patents and reach-through claims
  • Prepare your opinion in-house and know when a second opinion by outside counsel is necessary
  • Infringement: remedies and damages

Contents & Contributors

About

Your company's ability to be the first to explore new areas of research and develop new and profitable processes, products, and enhancements from these endeavours is a critical competency in its quest for profitability and business longevity. However, it is imperative that in your efforts to be first that you not trespass on another company's existing patents, thereby running the risk of ensuing - and costly - litigation. It is vital that you have the "know-how" to make early, sound, and competent business determinations as to whether you truly have freedom to operate in a given area.

You must be confident in your search strategies and analysis. You must know the status of pending patent applications and be able to assess whether these pending applications are impediments to your research.

There is one place you can equip yourself with the tools needed to overcome these uncertainties. The publication from the American Conference Institute's 5th National Patent Counsel's Forum on Freedom to Operate will bring you thoughtful and targeted commentary on the mechanics of making sound and competent freedom-to-operate determinations. ACI has gathered presentations from an outstanding faculty of leading in-house counsel and expert attorneys from the pharmaceutical, biotech, and chemical sectors. Have access to practical, and comprehensive information on how to:

  • Determine whether a patent is blocking and knowing your options if it is
  • Complete a claim construction analysis and present it
  • Patent application preparation & prosecution in a changing legal landscape
  • Anticipate how the doctrine of equivalents will be determined by a court of law
  • Assess the changing legal landscape on research tool patents and reach-through claims
  • Prepare your opinion in-house and know when a second opinion by outside counsel is necessary
  • Infringement: remedies and damages

Contents & Contributors


THE WHEN, WHERE, AND HOW ON DEVELOPING AN EFFICIENT AND COST-EFFECTIVE SEARCH STRATEGY
Anita Varma, Ropes & Gray LLP
George A. Gilbert AstraZeneca, Global IP, Patents

COMPLETING A CLAIM CONSTRUCTION ANALYSIS AND PRESENTING IT
Janet MacLeod, Crowell & Moring LLP

112 RHYME REASON AND MADNESS: CASE LAW ON ENABLEMENT, WRITTEN DESCRIPTION AND ENABLEMENT
Robin M. Silva, Dorsey & Whitney LLP

KNORR-BREMSE AND ITS IMPACT ON PATENT OPINION PRACTICE
Vineet Kohli, Merck & Co., Inc.

PATENT APPLICATION PREPARATION & PROSECUTION IN A CHANGING LEGAL LANDSCAPE
Mark A. Montgomery, Inspire Pharmaceuticals, Inc.
Kimberly Prior, Hoffman-La Roche Inc.
Hans Sauer, BIO

ASSESSING THE IMPACT OF THE DOCTRINE OF EQUIVALENTS ON CLAIM INTERPRETATION AND NONINFRINGEMENT OPINIONS
Warren D. Woessner, J.D., Ph.D., Schwegman Lundberg Woessner & Kluth

ASSESSING THE CHANGING LEGAL LANDSCAPE ON RESEARCH TOOL PATENTS AND REACH-THROUGH CLAIMS
James Leeds, Eli Lilly and Company

PRACTICAL POINTERS ON OPINION LETTERS
Noemi C. ("Nicky") Espinosa, Dechert LLP
Michael A. Davitz, Taro Pharmaceuticals

PRIVILEGE AND CONFIDENTIALITY IN U.S. FREEDOM TO OPERATE OPINIONS: WHEN ARE THEY PRESERVED AND WHEN ARE THEY WAIVED?
Jeffrey I.D. Lewis, Patterson Belknap Webb & Tyler LLP

LICENSING YOUR WAY OUT OF TROUBLE
Jonathan Klein-Evans, MedImmune, Inc.
Christine Bellon, Infinity Pharmaceuticals, Inc

INTERNATIONAL CONSIDERATIONS IN FREEDOM TO OPERATE: GLOBAL. PERSPECTIVES
Kristina Cornish, Kilburn & Strode

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



DOCUMENT TYPES: PRESENTATIONS AVAILABLE: 0