Inventing and “Reinventing” Under Patent Law

September 17, 2020

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, Patent Incentives, Patent Litigation, and Small Molecule Drug Development (4:00  4:30 ‎pm)
Patent incentives are widely considered critical to drug development.  Critics charge, however, ‎that firms sometimes use low-quality patents to extend patent term unduly.  This talk will present ‎empirical data on the types of patents that firms seek and how those patents are litigated, whether ‎in district court or at the Patent Trial and Appeal Board (PTAB).  It will also discuss the important ‎and complex public and private collaboration play 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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