Richard Bone
Jonathan L. Kennedy
255th ACS National Meeting - New Orleans
"Update On Patent Eligibility: Are things getting better for Patent Applicants?"
This presentation will provide a brief review of the landmark decisions from the United States Supreme Court that reshaped the patent eligibility framework, including, Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. v. CLS Bank Int’l and the two-prong test that developed from these cases.
Erin Sommers, erin.sommers@finnegan.com
Krista E. Bianco, krista.bianco@finnegan.com
Irene Hantman, ihantman@verdantlaw.com
Greg Sower, GSower@ramboll.com
255th ACS National Meeting - New Orleans
"Issues in Chemical Commercialization"
This program will address issues in chemical commercialization from regulatory compliance to Intellectual Property (IP) and contractual considerations. Participants will learn about the regulatory burden the Toxic Substance Control Act (TSCA) imposes on introducing chemicals into commerce from R&D to commercialization. Panelists will discuss protecting intellectual property through patents and EPA’s TSCA notification process. In addition, panelists will discuss contract provisions important to protecting inventors’ rights. Regulatory hurdles will be discussed as well. These include developing testing data for new chemicals and protecting confidential business information (CBI). TSCA does not require testing for new chemicals, however, failure to provide adequate toxicity testing can slow the EPA review process dramatically resulting in delayed access to market and unforeseen testing costs – testing can be designed to provide information for EPA review as well as REACH and GHS classifications. The Lautenberg amendments to TSCA have significantly restricted CBI claims in the US. Additionally, chemicals pursuing GRAS status for food uses will have to make safety information publicly available.
Xavier Pillai, xpillai@leydig.com
Andrew Berks, aberks@cittonechinta.com
255th ACS National Meeting - New Orleans
"Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions"
Chemical and pharmaceutical companies invest enormous amounts of money and inventor hours to discover and develop new materials such as drugs and processes for making them, as well as other inventions. Such companies also attempt to protect their inventions by securing patents. The success of these inventions in the marketplace depends on a number of factors, the foremost of which being the strength of the patents obtained to protect them. These patents are expected to protect the vast investment of money and time in creating these inventions, and the product market share, for the next nearly twenty years.
However, competitors will try to undermine the value of the inventions by challenging the strength of the patents, including their validity and coverage by the patent claims of their own products, in a court of law.
Recently, many seemingly strong and valuable patents have been invalidated or narrowly viewed and found not infringed. Recent court decisions reinforce the axiom that every word that goes into describing the invention in a patent application must be chosen with extreme care. This session will provide insights into how to reduce the chances of losing in a patent battle against an infringer, including practical pointers on how to write winning patent applications. This session will also analyze recent Federal Circuit court decisions that have invalidated such patents or found them not infringed, as real world examples of what can go right or wrong years after a patent is granted.
Krista E. Bianco
Finnegan LLP
254th ACS National Meeting - Washington, D.C.
"Intellectual Property Considerations When Entering into a Joint Venture"
Portfolio management transforms raw innovation into monetized assets. These practical considerations will assist in that transformation - from prioritizing patent prosecution to integrating business and legal objectives - in order to establish or maintain your position in the marketplace.
Charles Collins-Chase
Finnegan LLP
254th ACS National Meeting - Washington, D.C.
"Intellectual Property Considerations When Entering into a Joint Venture"
Renewable energy set records in 2015. Global investment in renewable energy rose 5% to $285.9 billion, exceeding the previous record set in 2011. Perhaps more impressive, roughly 134 GW of renewables were commissioned in 2015 (excluding large hydro). This investment and new capacity comes despite low oil prices that helped protect fossil fuels’ competitive market position.
In 2016 and 2017, these trends seemed to continue, with total renewable energy production in the United States exceeding 2015 levels, including in biofuels. Yet bringing renewable technologies to market is increasingly a capital-intensive process with many technical challenges. Projects are bigger than ever, and companies must overcome uncertain renewable fuel standards and government incentives and ongoing low oil prices. Faced with these challenges, many companies lack the resources and infrastructure to develop and implement renewable energy technology on the scale—and at the cost— the market demands. As a result, the biofuels industry has seen a rise in joint ventures and other collaborative relationships. For example, one study identified nearly 500 renewable energy partnership transactions announced between 2014 and 2015, of which 62% were joint ventures.
Although joint ventures can help companies overcome technological limitations, mitigate risks, and spread the costs of producing a product on a commercial scale, they also create potential pitfalls for companies with intellectual property assets. For example, a company may need to grant its joint venture partners a license to use its patented technologies or even share its trade secrets and other know-how with those partners, who may be industry competitors. Additionally, joint ventures can lead to development of new innovations, and disputes may arise as to who owns the resulting intellectual property and has the right to use it. This presentation will outline the potential perils of joint ventures for companies’ intellectual property portfolios and discuss strategies to protect their patents and trade secrets when entering these agreements.
Matthew Hlinka
Finnegan LLP
254th ACS National Meeting - Washington, D.C.
"Intellectual Property Considerations When Entering into a Joint Venture"
The number of renewable and clean energy patents has increased dramatically over the last decade as global investment in those technologies continues to rise. This presentation will highlight the recent growth of renewable and clean energy patents. This presentation will also explore various options for protecting your intellectual property such as patents, trademarks, copyrights, and trade secrets and discuss how those distinct, but complementary, options can best be integrated to effectively protect your intellectual property.
Justin J. Hasford
Erin M. Sommers
Finnegan LLP
254th ACS National Meeting - Washington, D.C.
"Recent Developments Regarding Post-Grant Challenges at the United States Patent & Trademark Office"
The America Invents Act provides inter partes review (IPR) and post-grant review proceedings (PGR) as means of challenging patents before the U.S. Patent and Trademark Office. Often challengers will attack patents simultaneously in IPR and PGR proceedings and in district court patent infringement cases. This presentation will explore the interplay between such challenges and discuss strategies for successfully defending patent rights against such attacks.
Krista E. Bianco
Kassandra Officer
Finnegan LLP
254th ACS National Meeting - Washington, D.C.
"Recent Developments Regarding Post-Grant Challenges at the United States Patent & Trademark Office"
This presentation will examine recent decisions from the Patent Trial and Appeal Board and the Court of Appeals for the Federal Circuit concerning the obviousness analysis for chemical and pharmaceutical patents, defenses to post-grant review proceedings, and the scope of the estoppel provision, among other recent developments.
