Join us for this informative patent law event co-sponsored with Locke Lord in Chicago. RSVP here.
Welcome/Introductory Remarks (4:00 – 4:15 p.m. EDT)
Professor Mark McKenna, Notre Dame Law School
The Hatch-Waxman Act: The Role of Generics in Patent Law (4:15 – 4:45 p.m. EDT)
The Hatch-Waxman Act frames the relationships between pharmaceutical companies that produce generic drugs and the first-mover pharmaceutical companies who invent brand-name drugs on the market. Abbreviated New Drug Applications (ANDA) filed by pharmaceutical companies who wish to produce and sell generic versions may lead to questions of validity for the patent first issued to the brand-name pharmaceutical company. ANDAs may also lead to negotiations brought on by the exclusivity promised by the Hatch-Waxman Act. How does the Hatch-Waxman Act work in practice and what are the most recent case law developments? How is the Hatch-Waxman Act perceived by policy-makers and might there be future revisions to it on the horizon? What are the litigation trends as more and more companies increasingly become “generic players”? The discussion will also explore the current Hatch-Waxman issues related to the coronavirus, such as how postponements of hearings have affected regulatory stays related to the approval of ANDAs for generic products.
- Moderator: Erika Lietzan, William H. Pittman Professor of Law & Timothy J. Heinsz Professor of Law, University of Missouri School of Law
- David Abramowitz, Partner, Locke Lord
- Carolyn Blessing, Partner, Locke Lord
- Amanda Hollis, Partner, Kirkland & Ellis
BREAK (4:45 – 5:00 p.m. EDT)
Keynote Address, Innovation in Patent Law between Patentability and Invalidity (5:00 – 5:30 p.m. EDT)
The Patent Act is in part meant to promote the progress of the sciences. Innovation is most often seen as the embodiment of this progress. How, however, do we measure that innovation when patents are declared invalid or limited in scope? How do we define innovation both during and after the patentability stage as patents exist in a life cycle of use, reexamination, and post grant review? This keynote will also explore the important role public and private collaboration has in patent development.
Professor Arti Rai, Duke University School of Law
BREAK (5:30 – 5:45 p.m. EDT)
Inventions at the “Litigation” Stage: Inter Partes Review and/or District Court (5:45 – 6:15 p.m. EDT)
Companies and inventors developing pharmaceuticals will often strategically decide whether to ask for inter partes review at the Patent Office to address patentability or to litigate patentability and other issues in district court. Different results in each of these venues, often based on the application of different standards of review, make these strategic decisions important for the scope of patent protection and the validity of patents themselves. How is patent validity best litigated in district court and what methods of advocacy are effective? What are the nuances of inter partes review of which attorneys practicing before the PTAB should be aware? Is engaging in forum shopping uniquely beneficial to certain claims? The discussion will also touch on novel issues that have arisen in IP litigation due to the coronavirus and the need to work remotely. Having to conduct depositions, for example, from multiple locations and participate in hearings and oral arguments remotely are new facets of IPRs and litigation in district court.
- Moderator: David Schwartz, Professor of Law and Associate Dean of Research & Intellectual Life, Northwestern University Pritzker School of Law [Moderator]
- Emer Simic, Partner, Green Griffith
- Patrick Gallagher, Partner, Duane Morris
- Judge Jo-Anne Kokoski, Patent Trial and Appeal Board
Professor Stephen Yelderman, Notre Dame Law School
Originally published at iptech.nd.edu.