This CLE webinar will provide guidance to IP counsel for calculating patent term adjustments, interplay with patent term extensions, examine recent court treatment and proposed legislative changes, and offer approaches for preserving rights and maximizing patent term adjustments and patent term extensions.
In 2012, two decisions held the USPTO had been improperly calculating PTA B-delay for patents involving a request for continued examination Exelixis Inc. v. Kappos (“Exelixis I“) and Novartis v. Kappos). The rulings retroactively added significant time to the patent terms of the patents at issue.
More recently, two district court decisions held that the USPTO calculation was proper (Exelixis v. Kappos (2013) and Abraxis Bioscience v. Kappos (2014), presenting a 2-2 “tie” for the Federal Circuit.
On January 15, 2014, the Federal Circuit broke the tie in favor of the USPTO: filing an RCE stops the accumulation of B-delay. The Federal Circuit rejected the argument that once three calendar years from the application-filing date have come and gone, any time spent in the PTO after that date must be added to the patent term. However, the Federal Circuit also held that the time between allowance and issuance must be added to the patent term as B-delay, if appropriate.
Listen as our authoritative panel of patent attorneys examines the recent developments for PTAs and their potential impact, methods for calculating PTA, what can be done to preserve rights, and offers best practices for maximizing PTA.
- Recent developments
- Rule changes
- Court treatment
- Calculating PTA
- Wyeth 3 yr. pendency
- RCE and terminal disclaimer impact?
- Patent term extensions
- Restrictions on PTE
- Best practices
- Preservation of rights
- Maximizing PTA vs. PTE
The panel will review these and other key questions:
- Is Exelixis I gone forever?
- What impact could the proposed patent reform bill have?
- How will the recent changes for the USPTO alter the landscape for PTA and PTE practice?
- What best practices should patent applicants take to preserve rights and maximize PTA and PTE?
Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.
Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
Donna M. Meuth, Associate General Counsel
Eisai, Andover, Mass.
Ms. Meuth has diverse experience in intellectual property law, including patent portfolio management, patent prosecution and litigation. Her technical focus is in the pharmaceutical, chemical and biotechnology arts. She has significant interference experience and litigation experience, in particular ANDA litigation for branded pharmaceuticals.
Additional faculty to be announced.
Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.
Continuing Legal Education
Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.