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Robert W. Bahr
Partner | Maier & Maier, PLLC
Deborah H. Yellin
Partner | Crowell & Moring LLP
Alice Ho, Ph.D. Senior
Associate | Arnold & Porter Kaye Scholer LLP

Navigating Double Patenting in the USPTO Era of Rulemaking | On-Demand

Broadcast Date: Tuesday, February 25, 2025
from 12:00 pm to 1:30 pm (ET)

Overview:

In today’s evolving patent landscape, understanding obviousness-type double patenting (ODP) is critical to securing and maintaining strong intellectual property rights. The Federal Circuit’s evolving case law in the URAA era from Gilead to Novartis, and most recently Cellect and Allergan has significant implications for patent protection strategies.

Join our speakers in this CLE webcast as they explore the latest developments in double patenting jurisprudence and share strategic insights to mitigate risks and optimize patent prosecution. The discussion will cover proactive measures such as removing unnecessary terminal disclaimers before issuance, leveraging patent term extension (PTE), and addressing the risk of ODP to patent term adjustment (PTA). It will also highlight key prosecution strategies, IP portfolio audits to identify potential ODP challenges, and the use of reissue applications to correct PTA-related vulnerabilities.

Key topics to be discussed:

  • Background of double patenting and Federal Circuit case law (Gilead, Novartis, Cellect, Allergan)
  • Preemptive strategies to avoid unnecessary terminal disclaimers
  • ODP implications on PTA and PTE protection
  • Holistic prosecution approaches to mitigate ODP risks
  • Best practices for auditing IP portfolios and addressing ODP challenges
  • Reissue applications as a tool for patents with PTA
  • Global IP strategy considerations for US national stage entry
  • Decision-making authority in licenses and collaboration agreements

Agenda:

Robert W. Bahr, Partner

Maier & Maier, PLLC

  • Background of double patenting
  • The Federal Circuit case law on double patenting in the URAA era is evolving (Gilead – Novartis, Cellect – Allergen):
  • Remove any unnecessary terminal disclaimer before the patent issues (PTO will not permit removal after patent grant).

Alice Ho, Ph.D., Senior Associate

Arnold & Porter Kaye Scholer LLP   

  • Implications of Federal Circuit cases on ODP practice and consequences of these cases on building patent protection
  • Holistic prosecution approach to avoid pitfalls
  • Leveraging PTE protection

Deborah H. Yellin, Partner

Crowell & Moring LLP

  • ODP risk to PTA and child applications
  • Auditing IP portfolios to determine potential ODP challenges
  • Global IP strategy for US national stage entry
  • Decision making authority over prosecution in licenses and collaboration agreements
  • Loper Bright
  • Patent legislation

Who Should Attend:

  • IP Attorneys & Consultants
  • Patent Attorneys
  • Patent Consultants
  • Patent Litigators
  • IP Counsel
  • Other Related/Interested Professionals

Credit:

Course Level:

Intermediate

Advance Preparation:

Print and review course materials

Method of Presentation:

On-Demand Webcast

Prerequisite:

General knowledge of patent laws

Course Code:

1411285

Total Credit:

CLE Credit:

CA CLE 1.50 General – Approved Until: 2/25/2027

PA CLE 1.50 General – Approved Until: 2/25/2027

VT CLE 1.50 General – Approved Until: 12/31/2026

NJ CLE 1.50 General – Credits through Reciprocity

NY CLE 1.50 Areas of Professional Practice – Credits through Reciprocity

AR CLE 1.50 General – Credits through Reciprocity

CT CLE 1.50 General – Credits through Reciprocity

NH CLE 1.50 General – Meets the requirements of NH Supreme Court Rule 53

MO CLE 1.50 General – Approved Until: 2/25/2025

Pending CLE Application:

GA, TN, WI

Self-Apply:

AL, CO, DE, FL, ID, IL, IN, IO, KS, KY, LA, NC, ME, MN, MS, MT, NE, NV, NM, ND, OH, OK, OR, SC, TX, UT, VA, WA, WV, WY

If you’d like us to apply for CLE, you may opt to pay the CLE processing fee here.

No MCLE Requirements:

DC, MD, MA, MI, SD

Not Eligible for CLE:

AK, AZ, HA

Instructions for Participating the Live Webinar

    • Please Register for the course by clicking the "take the course: button if you have not already registered.
    • Check Your Email – 24 hours before the webinar, you will receive an email with all necessary instructions, including access details and course materials. This information will also be posted here in this window when it is available.
    • Download Course Materials – Course materials will be available for download **24-48 hours before** the live webinar. Be sure to review them in advance. The Link to download is available by clicking the lesson tab.
    • Join the Webinar – Follow the instructions in the email to access the live broadcast at the scheduled time.
    • Note the Secret Words – During the webinar, secret words will be announced periodically. Please write them down.
    • Take the Quiz – After the webinar, click on the quiz link below and enter the secret words to complete the quiz.
    • Print Your Certificate – Upon completing the quiz, you will be able to print your Certificate of Attendance, which includes instructions on how to obtain CLE, CPE, or other applicable credits for the course.
    • On-Demand Access – The on-demand version of this course will be available 24-48 hours after the live webinar. If you miss the live presentation or need to review the content, you will have access to the on-demand version as an enrolled student. To access on-demand content, click the lesson and follow the instructions.
    • Support: If you have any questions, please refer to the email instructions or contact support: support@theknowledgegroup.zohodesk.com.