Inventing and “Reinventing” Under Patent Law

    Speaking Engagement

    Inventing and “Reinventing” Under Patent Law‎

    Presented by Notre Dame Law School, co-sponsored by Locke Lord
    Organized by Locke Lord Partner and Notre Dame Alumna, Carolyn Blessing‎

    September 17, 2020‎
    ‎3:00 p.m. CST/4:00 p.m. EDT


    Welcome/Introductory Remarks (3:00 – 3:15 p.m.)

    • Professor Mark McKenna, Notre Dame Law School ‎

    The Hatch-Waxman Act: The Role of Generics in Patent Law (3:15 – 3:45 p.m.)
    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, Associate 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 (3:45 – 4:00 p.m.) 

    Keynote Address, Innovation in Patent Law between Patentability and Invalidity (4:00  ‎‎4:30 p.m.)
    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 (4:30  – 4:45 p.m.) 

    Inventions at the “Litigation” Stage: Inter Partes Review and/or District Court (4:45 – ‎‎5:15 p.m.)
    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. ‎

    • 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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