7th Advanced Forum on

Biotech Patents

Analysis, Insights and Strategies for New Challenges in Biotech Patent Practice

Wednesday, November 29, 2006

About

Cut through the confusion of the myriad new challenges facing biotech patent practice

In this past year there has been a renewed interest in patent reform by Congress, the public, the PTO and now even the Supreme Court. In the already complicated world of biotech patenting, it is crucial to not only anticipate and understand this evolving legal environment but to also incorporate such change into developing and managing your biotech patent portfolio. Proposed reforms like limiting continuation and restriction practices and pending Supreme Court patent decisions could have a vast impact on strategies for filing and drafting biotech patents. If these dilemmas were not enough, there are new emerging standards developing for claim construction and still unanswered questions about the research patent tools exemption. Meanwhile, as science progresses at an increasingly rapid rate, a number of new challenges arise in relation to biotech patents. In short, anyone drafting biotech patents needs to be able to incorporate these standards, changes and scientific realities into their patents to ensure that they are not subjected to damaging future claims, both in the United States and abroad.

With all of this in mind, the American Conference Institute has developed a publication from the 7th Advanced Forum on BIOTECH PATENTS: Analysis, Insights and Strategies for New Challenges in Biotech Patent Practice to provide you with the most up-to-date and complete information on how to incorporate the current legal developments effectively into your biotech patent practice. Leading patent practitioners and experienced in-house counsel from Abbott Bioresearch Center, Athersys Inc., ChondroGene, Inc., Arent Fox LLC, Novo Nordisk, Agensys Inc., and Vertex Pharmaceuticals Inc. will show you how to:

  • REASSESS your biotech patent strategy in light of recent rule changes, Federal Circuit and Supreme Court decisions
  • CONSIDER the impact of generic biologics on drafting biotech applications in the future
  • HANDLE the tough claim construction questions in the biotech industry
  • UNDERSTAND the troubling resurgence of decisions finding inequitable conduct
  • APPRECIATE the increasing importance and complexity of diagnostic testing in the biotech industry

Contents & Contributors

About

Cut through the confusion of the myriad new challenges facing biotech patent practice

In this past year there has been a renewed interest in patent reform by Congress, the public, the PTO and now even the Supreme Court. In the already complicated world of biotech patenting, it is crucial to not only anticipate and understand this evolving legal environment but to also incorporate such change into developing and managing your biotech patent portfolio. Proposed reforms like limiting continuation and restriction practices and pending Supreme Court patent decisions could have a vast impact on strategies for filing and drafting biotech patents. If these dilemmas were not enough, there are new emerging standards developing for claim construction and still unanswered questions about the research patent tools exemption. Meanwhile, as science progresses at an increasingly rapid rate, a number of new challenges arise in relation to biotech patents. In short, anyone drafting biotech patents needs to be able to incorporate these standards, changes and scientific realities into their patents to ensure that they are not subjected to damaging future claims, both in the United States and abroad.

With all of this in mind, the American Conference Institute has developed a publication from the 7th Advanced Forum on BIOTECH PATENTS: Analysis, Insights and Strategies for New Challenges in Biotech Patent Practice to provide you with the most up-to-date and complete information on how to incorporate the current legal developments effectively into your biotech patent practice. Leading patent practitioners and experienced in-house counsel from Abbott Bioresearch Center, Athersys Inc., ChondroGene, Inc., Arent Fox LLC, Novo Nordisk, Agensys Inc., and Vertex Pharmaceuticals Inc. will show you how to:

  • REASSESS your biotech patent strategy in light of recent rule changes, Federal Circuit and Supreme Court decisions
  • CONSIDER the impact of generic biologics on drafting biotech applications in the future
  • HANDLE the tough claim construction questions in the biotech industry
  • UNDERSTAND the troubling resurgence of decisions finding inequitable conduct
  • APPRECIATE the increasing importance and complexity of diagnostic testing in the biotech industry

Contents & Contributors


UNDERSTANDING THE PROPOSED NEW USPTO RULES
Michele A. Cimbala PhD, Sterne, Kessler, Goldstein & Fox P.L.L.C.(Washington, DC)

INVESTIGATING THE PROPOSED RULES FOR CLAIM EXAMINATION
Cynthia L. Kanik, PhD, Lahive & Cockfield LLP (Boston, MA)

NAVIGATING THE MURKY WATERS OF PATENT REFORM IN THE BIOTECH INDUSTRY
Shane M. Popp, Legal, Agensys Inc. (Santa Monica, CA)

CLAIM CONSTRUCTION AFTER PHILLIPS AND WRITTEN DESCRIPTION
John P. Iwanicki, Banner & Witcoff Ltd. (Boston, MA)

UPDATES ON CLAIM CONSTRUCTION –ENABLEMENT, WRITTEN DESCRIPTION, OBVIOUSNESS, & UTILITY
Kenneth Zwicker, PhD, Abbott Bioresearch Center (Worcester, MA)

CHANGES AT THE USPTO AND THEIR IMPACT ON BIOTECH PATENT PRACTICE
Jasemine C. Chambers, PhD, JD, United States Patent and Trademark Office (Alexandria, VA)

BIOTECH UTILITY: SUBSTANTIAL, SPECIFIC, CREDIBLE
Sander M. Rabin, MD, Whiteman Osterman & Hanna LLP (Albany, NY)

REVISITING THE RESEARCH PATENT TOOLS EXEMPTION
James F. Haley, Fish & Neave (New York, NY)

INTERPRETING RECENT DECISIONS REGARDING INEQUITABLE CONDUCT
Jennifer Gordon, Sidley Austin LLP (New York, NY)

PLANNING PATENT APPLICATIONS WITH THE ADVENT OF GENERIC BIOLOGICS
Rochelle K. Seide, PhD, Arent Fox PLLC (New York, NY)

DIAGNOSTIC TESTING – WHAT IS THE PTO ISSUING?
Kathleen Madden Williams, Edwards, Angell, Palmer & Dodge LLP (Boston, MA)

LABCORP V. METABOLITE: REPERCUSSIONS ON THE DIAGNOSTICS INDUSTRY?
Lesley Rapaport, ChondroGene, Inc. (Toronto, ON)

BREAKING THROUGH THE PATENT GRIDLOCK AND THE RETURN TO PATENT POOLS
Kenneth H. Sonnenfeld, PhD, J.D., King & Spalding (New York, NY)
Lisa A. Dixon, PhD, Vertex Pharmaceuticals Inc. (Cambridge, MA)

PROSECUTING ANTIBODY CLAIMS – STRATEGIES FOR ADDRESSING THE MANY CHALLENGES
Jane E. Remillard, Lahive & Cockfield LLP (Boston, MA)

TACKLING GENE SEQUENCES IN PATENTS
Janis K. Fraser, PhD, Fish & Richardson P.C. (Boston, MA)

"MAKING IT NEW" – ARE NEW USES FOR "OLD COMPOUNDS" STILL PATENTABLE?
Warren D. Woessner, Schwegman, Lundberg, Woessner & Kluth, P.A.(Minneapolis, MN)

CLARIFYING THE LAW OF INHERENT ANTICIPATION
Anne Brown, Athersys Inc. (Cleveland, OH)

ADDRESSING BIOTECHNOLOGY PATENT ISSUES IN A GLOBAL ENVIRONMENT
Bert Oosting, Lovells (Amsterdam)

GLOBAL ISSUES IN BIOTECH PATENTING
M. Veronica Mullally, Orrick, Herrington & Sutcliffe LLP (New York, NY)

SPECIAL CONCERNS IN PROCURING PATENT PROTECTION FOR BIOTECH INVENTIONS IN CHINA
Gesheng Huang, ZhongZi Law Office (Beijing)

MICROSOFT EXTRATERRITORIALITY: "MUTINY… HERESY"
Harold C. Wegner, Foley & Lardner LLP (Washington, DC)

LICENSING IN LIGHT OF MEDIMMUNE
Stephen R. Albainy-Jenei, Frost Brown Todd LLC (Cincinnati, OH)



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