Exploring the Regulatory Aspect of IP Due Diligence: Examining the Implications of Recent Developments at the FDA on IP Due Diligence

November 29, 2023 12:00pm

Kurt R. Karst
Director
Hyman, Phelps & McNamara, P.C

Michael K. Stern
Of Counsel
Covington & Burling LLP

Brian Stone
Associate General Counsel, Global Legal-Regulatory
Viatris

Topics of discussion will include:

  • Creating and valuing exclusivity and patent term extension forecasts as part of the IP due diligence
    • Knowing which questions to ask to determine which patent should ultimately receive the patent term extension
  • How to navigate orphan drug exclusivity post Catalyst
    • Unpacking Jazz Pharmaceuticals lawsuit against the FDA for granting orphan drug exclusivity to Avadel’s narcolepsy drug on the basis of clinical superiority
    • CMS’s guidance on orphan drug exclusivity and the IRA’s price control provisions
  • Learning the current landscape for Orange Book listing requirements as applied to REMS or device patents
    • Unpacking Jazz Pharmaceuticals lawsuit against Avadel relating to the listability of REMS patents
  • Strategies to protect against the risk
  • Understanding the role of FDA classifications and designations in triggering price control negotiations under the Inflation Reduction Act
    • Navigating compliance challenges and implications for regulatory strategies