November 3-10, 2022
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Event Session

Double Patenting, Double Trouble: Continuations, Terminal Disclaimers, and Interplay with PTA and PTE

October 26, 2022 @ 1:45 PM EST

1:45 PM ET
October 26, 2022

Double Patenting, Double Trouble: Continuations, Terminal Disclaimers, and Interplay with PTA and PTE

View Session Speakers

The judicially created doctrine of obviousness-type double patenting (OTDP) is a complex body of law with very high stakes for the life sciences industry. A negative decision on OTDP can cost the patentee years of patent term on clinical assets, severely limit the ability of the patentee to monetize their patent portfolio, and even invalidate patents if careful control of ownership is not maintained across related patent families.

There have been some recent positive developments in OTDP case law.  In Novartis v. Erza the CAFC ruled that OTDP could not be used to cut off patent term associated with a Patent Term Extension (PTE). And district courts have also recently begun to wrestle with this very question and in Mitsubishi v. Sandoz the district court of New Jersey held that PTA was also safe from OTDP. This very question has also been raised in a recent petition for certiorari to the U.S. Supreme Court in Sawstop v. USPTO. SawStop Holding LLC v. USPTO, No. 22-11. Meanwhile, a recent letter from Senator Patrick Leahy (D-VT) and others to the USPTO urges the expansion of OTDP and asks “should the filing of a terminal disclaimer  be an admission of obviousness?”

This panel will tackle the recent changes in OTDP and discuss the future of this complex body of law.

CLE Materials

* A Note on Materials: For live, in person programs we apply for MCLE in Virginia, as well as other jurisdictions (see the MCLE tab in the navigation bar above). MCLE regulations require substantive writing on the topic covered during the presentation. The materials provided, often published by IPWatchdog.com authors and contributors, relate to the topic but are not intended to pigeon-hole guest speakers in any way. They are intended to be informative and elucidate the issues that will be discussed, although not necessarily represent the point of view that will be taken by any particular panelist. To date the articles we have selected have always been sufficient to satisfy MCLE authorities. 



Add to Calendar 12/08/2022 3:37 AM America/New_York Double Patenting, Double Trouble: Continuations, Terminal Disclaimers, and Interplay with PTA and PTE

The judicially created doctrine of obviousness-type double patenting (OTDP) is a complex body of law with very high stakes for the life sciences industry. A negative decision on OTDP can cost the patentee years of patent term on clinical assets, severely limit the ability of the patentee to monetize their patent portfolio, and even invalidate patents if careful control of…

Session Speakers

Robert Sahr, Ph.D.

Shareholder, Biotechnology

Wolf Greenfield

Craig Svoboda

Craig Svoboda

Global Head of Intellectual Property

Avotech USA, Inc. 

Anthony Prosser, Ph.D.

Anthony R. Prosser, Ph.D.

Patent Attorney

Knowles Intellectual Property Strategies

Mary Till

Mary C. Till

Senior Legal Advisor

Office of Patent Legal Administration (USPTO)