Tech Transfer Central

Preparing “Diagnose & Treat” Patent Claims to be Valid and Enforceable

Format: On-Demand Video with closed captions
Originally presented: Wednesday, October 24, 2018
Price: $197

Ever since the landmark (and many say deeply flawed) Mayo v. Prometheus Supreme Court decision in 2012, it’s been a barren patent landscape for “diagnose and treat” method claims. But with several recent court decisions and USPTO guidance, there’s new room to maneuver in this complex area of patent practice – and new hope for universities and medical research institutions to patent their diagnostic methods, potentially opening a valuable new source of licensing revenues.

But challenges remain, and expert claims drafting guidance will be necessary to ensure these innovations are both patent eligible and enforceable.

That’s why Technology Transfer Tactics’ Distance Learning Division has teamed up with patent experts from Amster, Rothstein & Ebenstein, LLP – who have carefully studied the current state of the law and are leading the charge to apply it — to present this important, cutting edge webinar:

Preparing "Diagnose & Treat" Patent Claims to be Valid and Enforceable

Our attorney panelists will present:

  • State of the law on patent-eligibility and divided infringement
  • Review of recent cases involving single and two-actor method claims, including:
    • Cleveland Clinic Foundationv. True Health Diagnostics LLC
    • Eli Lilly & Co. v. Teva Parenteral Medicines Inc.
    • Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals
  • Sample form of claims that straddle patent-eligibility and divided infringement concerns
  • USPTO guidance and examples
  • Strategies for increasing likelihood of obtaining meaningful patent protection from the USPTO
  • Dealing with concerns of potential licensees

Meet Your Team of Experts:

Charles R. Macedo litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios.

Mr. Macedo writes prolifically and lectures regularly as he tracks and analyzes in real time the most important developments affecting IP strategy and litigation. As Co-Chair of the Amicus Committee of the New York Intellectual Property Law Association, Mr. Macedo has been principal counsel or additional counsel on amicus briefs in some of the leading patent cases of recent years, including Cuozzo, Highmark and Octane, Kimble v. MarvelMayo v. Prometheus, Association of Molecular Pathology v. Myriad Genetics Inc., CLS Bank Int’l v. Alice, and Akamai. His appellate experience also includes petitions for mandamus, for rehearing before the U.S. Court of Appeals for the Federal Circuit, and for certiorari to the U.S. Supreme Court on behalf of various clients.

He holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. The recipient of the prestigious AIPLA Robert C. Watson Award, Mr. Macedo also currently serves on the Editorial Board for Journal of Intellectual Property Law and Practice.

Alan D. Miller, PhD, evaluates, prosecutes and protects inventions in biotechnology, biochemistry, life sciences and medical and pharmaceutical arts. With scientific degrees in chemistry, biological sciences and neurophysiology, and background and research experience as a faculty member at the Rockefeller University, Dr. Miller’s breadth and depth of scientific experience serves clients in a wide range of technologies. With 19 years experience in patent prosecution in the U.S. and abroad, Dr. Miller develops patent prosecution strategy to best account for changes in patent law and practice, such as changes in non-obviousness and utility requirements. He advises and obtains patent protection for academic, research and commercial institutions such as Albert Einstein College of Medicine, The Feinstein Institute for Medical Research, Montefiore Medical Center, Mount Sinai Medical Center, Panasonic, and Victoria Link Limited. For many years, he was a faculty member at The Rockefeller University in New York City where he received funding for research in neuroscience from NIH, NSF and NASA. Dr. Miller has over 100 scientific publications.

Brian J. Amos, PhD, is a former research neuroscientist who represents academic and research institutions in the preparation and prosecution of patent applications worldwide, predominantly in the fields of biotechnology, medical therapeutics and pharmaceuticals. He works closely with scientists and Technology Transfer Offices to identify and inventory new patentable technologies; protect discoveries through patents; and commercialize intellectual property through licensing and development arrangements with other business entities. He is admitted to the New York State Bar and is registered to practice before the U.S. Patent and Trademark Office.

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Digital Package

This program is delivered as a digital package that includes the on-demand video with closed captions and the slide deck from the live presentation – and you can share it whenever you wish throughout your organization.

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