Inventing and “Reinventing” Under Patent Law‎


Location: 2108 Eck and Online

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.‎

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  • 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 ‎

Concluding Remarks

Professor Stephen Yelderman, Notre Dame Law School



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