Posts tagged Developments in Pharmaceutical Patent Law
Definiteness and the Medicines Co. and Forest Labs. Decisions

Author

Dr. Brian Trinque
Lathrop Gage LLP, Boston MA

Presentation

256th ACS National Meeting - Boston
Monday, August 20, 2018, 9AM
"Developments in Pharmaceutical Patent Law"

Abstract

Pharmaceutical patent practitioners implement IP strategies for medicines well beyond the granting of a basic composition-of-matter patent. Novel formulations, combination therapies, dosing strategies, and patient stratifications are just a few examples of the discoveries arising from clinical development that can inspire new patent applications, which will protect these inventions, and, importantly, extend patent protection for a product. Practitioners must often strike a balance between the trifecta of the examples, which illustrate the discovery and serve as a building block for the filing; the specification, which provides an invention narrative that advocates for successful patenting; and, finally, claim breadth, which one hopes to maximize, but is grounded by the realities of novelty, obviousness, written description, and enablement. The Forest Labs., Inc. v. Teva Pharms. USA, Inc., decision, which was released at the end of 2017, and The Medicines Co. v. Mylan decision before it, are important reminders that claim definiteness must be given equal weight when preparing applications directed toward such “second generation” pharmaceutical discoveries. In particular, these decisions show that our definiteness requirements can impact patent prosecution, as well as claim interpretation and validity during an infringement action.

Obviousness, the CAFC, and Second Generation Filing Strategies

Author

Dr. Benjamin A. Vaughan and Dr. Nicole Sassu
Lathrop Gage LLP, Boston MA

Presentation

256th ACS National Meeting - Boston
Monday, August 20, 2018, 9AM
"Developments in Pharmaceutical Patent Law"

Abstract

This lecture provides an overview of obviousness as it relates to pharmaceuticals and commercial drug formulations. Additionally, patent strategies and the most recent federal circuit cases relating to “second generation” filings, which are directed toward discoveries involving previously  known pharmaceuticals, such as pharmaceutical formulations, dosing strategies, and combination therapies will be discussed. Relevant case law related to second generation filings will be reviewed to provide important insight into effective patent specification and claim drafting strategies for such discoveries. This presentation will be useful to those with all levels of experience in pharmaceutical patent law.

What Constitutes an Inventor? A Review of Federal Circuit Case Law

Author

Dr. Andrew Ehle
Lathrop Gage LLP, Boston MA

Presentation

256th ACS National Meeting - Boston
Monday, August 20, 2018, 9AM
"Developments in Pharmaceutical Patent Law"

Abstract

Determining inventorship is a crucial part of intellectual property law. Often, disputes about who should be listed as an inventor on a given patent application can only be resolved by examining the specific contributions of each person involved in the research that led to the patentable material. To examine the legal context for what constitutes “significant contribution to the invention,” and thereby inventorship, several key Federal Circuit Cases will be discussed. This presentation will be useful to those with all levels of experience in pharmaceutical patent law.

Pharmaceutical Patent Prosecution Primer

Author

Dr. Brian Trinque
Lathrop Gage LLP, Boston MA

Presentation

256th ACS National Meeting - Boston
Monday, August 20, 2018, 9AM
"Developments in Pharmaceutical Patent Law"

Abstract

The pharmaceutical patenting process includes identifying an invention, writing a patent application that protects that invention, and prosecuting the application before the U.S. Patent Office (and patent offices throughout the world). A basic understanding of this process is a must for any scientist (academic, industrial, or otherwise). This talk will provide an overview of our current patent laws, and demonstrate how those laws are applied to a variety of pharmaceutical innovations, such as novel chemical entities and formulations. This talk will also provide a foundation for understanding the rest of today’s discussions.