8th Advanced Forum on

Biotech Patents

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

Wednesday, April 18, 2007

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.

Adapt biotech patent practices in accordance with new legal and scientific standards

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 the 8th Advanced Forum on BIOTECH PATENTS: Analysis, Insights and Strategies for New Challenges in Biotech Patent Practice publication 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.

Take this opportunity to get the most updated and comprehensive information and advice you need from leading-edge biotech patent practitioners while you network with your peers and colleagues.

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.

Adapt biotech patent practices in accordance with new legal and scientific standards

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 the 8th Advanced Forum on BIOTECH PATENTS: Analysis, Insights and Strategies for New Challenges in Biotech Patent Practice publication 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.

Take this opportunity to get the most updated and comprehensive information and advice you need from leading-edge biotech patent practitioners while you network with your peers and colleagues.

Contents & Contributors

Proposed New USPTO Rules: Continuations, IDS’, Restrictions and More
Michele A. Cimbala Ph.D., Sterne Kessler Goldstein & Fox PLLC (Washington, DC)

Investigating the Proposed Rules for Claims Examination
Cynthia L. Kanik Ph.D., Lahive & Cockfield LLP (Boston, MA)

Drafting Patent Applications: Updates on Claim Construction –Written Description, Obviousness, Enablement and Utility
John P. Iwanicki, Banner & Witcoff Ltd. (Boston, MA)

Recognizing the Unique Challenges of Drafting Patents for Cutting Edge Innovations in Biotechnology
Cathryn Campbell, Needle & Rosenberg, P.C. (San Marcos, CA)

Revisiting the Research Patent Tools Exemption
James F. Haley, Fish & Neave (New York, Ny)

Prosecuting Antibody Claims – Strategies for Addressing the Many Challenges
Jeanne M. DiGiorgio, Lahive & Cockfield, LLP (Boston, MA)

Planning Patent Applications With the Advent of Generic Biologics
Rochelle K. Seide, Ph.D., Arent Fox PLLC (New York, NY)

Diagnostic Testing – What is Patentable?
Geoffrey M. Karny, Baker & Daniels LLP (Washington, DC)

Labcorp V. Metabolite: Repercussions on the Diagnostics Industry?
Lesley Rapaport, GeneNews (Toronto, ON)

Breaking Through the Patent Gridlock and the Return to Patent Pools
Kenneth H. Sonnenfeld, Ph.D., J.D., King & Spalding LLP (New York, NY)
Lisa A. Dixon, Ph.D., Vertex Pharmaceuticals Inc. (Cambridge, MA)

Keeping Your Conduct Equitable
Karen Boyd, Fish & Richardson P.C. (Redwood City, CA)

Patenting Gene Sequences – Past, Present and Future
Antoinette F. Konski, Foley & Lardner LLP (Palo Alto, CA)
Micheal Hebert, PH.D., Foley & Lardner LLP (Palo Alto, CA)

“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)

Global Issues in Biotech Patenting
M. Veronica Mullally, Orrick, Herrington & Sutcliffe LLP (New York, NY)

Reviewing the Year in Patents
Carl Battle, Elan Pharmaceuticals, Inc. (South San Francisco, CA)



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