The Business of PIV Disputes

Track 1 — The Cost and Worth of a Patent: The Economics of a Paragraph IV Challenge

Track 2 — Best Practices for Utilizing FDA’s Citizen Petition Process to Achieve Market Exclusivity

April 19, 2023 3:45pm

Track 1

Jonathan Davies
Partner
Cooley LLP

Isaac S. Ashkenazi
Partner
Paul Hastings LLP

Track 2

Kathleen Gersh
Partner
Loeb & Loeb LLP

Kurt Karst
Director
Hyman, Phelps & McNamara PC


Track 1 — The Cost and Worth of a Patent: The Economics of a Paragraph IV Challenge
  • IP and economic assessments on product selection and defense
  • Factoring-in R&D considerations and market trends
  • Analyzing available exclusivities, both regulatory and patent
  • Assessing key litigation considerations and related costs
  • Considering the likelihood of victory depending on patent type
  • Budgeting, forecasting, and aligning litigation costs to business goals
  • Exploring cost saving options in litigation
  • Examining value of licensing deals and structures

Track 2 — Best Practices for Utilizing FDA’s Citizen Petition Process to Achieve Market Exclusivity
  • Reviewing FDA’s citizen petition processes and protocols
  • Understanding the criteria FDA considers when evaluating a petition
    • How does FDA determine the petition’s primary purpose was to delay?
  • Analyzing market exclusivities to be addressed in the petition
  • Detailing what should be included and what the process entails
  • Taking stock of recent decisions involving Citizens Petitions
  • Best practices for the reconsideration process and litigation