Understanding Written Description and Enablement of Life Science Inventions
Date: June 23, 2020
Written description and enablement are an area of U.S. Patent law that are causing increasing difficulties to applicants and/or patentees, particularly in the life science area. Not only is the frequency of written description and/or enablement rejections rising during prosecution, but also during post-grant review and litigation. In this webinar, attorney Lisa Mueller will explore the written description and enablement requirements in detail exploring such topics as:
• Understanding the statutory framework of written description and enablement and the differences between each
• Timing of disclosure requirements
• Requirements for conveying possession of an invention to satisfy the written description requirement
• Requirements for disclosing how to make and use an invention sufficient to put the public in “possession” of an invention without undue experimentation
• Reviewing relevant case law involving written description and enablement in the life sciences area, including small and large molecules
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Overcoming Double Patenting Rejections and Avoiding Terminal Disclaimers
Date: May 6, 2020
This webinar will explore the in’s and outs of double patenting under U.S. patent law. Specifically, we will examine the differences between statutory and non-statutory (e.g., obviousness-type) double patenting, best practices for overcoming double patenting rejections when they arise during prosecution and how to avoid common mistakes when filing terminal disclaimers. This webinar will also provide tips and creative ways to minimize the impact of obviousness-type double patenting on any potential patent term adjustment.
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Patenting Strategies in Academic Drug Discovery
Date: April 8, 2020
Universities and academic institutions are devoting greater resources toward drug discovery activity. The most common approach for universities to commercializing these types of discoveries is to file a patent application claiming the novel and inventive aspects of the discovery, and then seek to license this and any accompanying know how or data to a commercial partner for further development. This webinar will explore in detail patent strategies in academic drug discovery. Specifically, the webinar will examine the impetus for academic drug discovery, patenting in the drug discovery process, the criteria for patentability, the patenting of salts, solvates, polymorphs and prodrugs as well as drug repurposing.
Foreign Filing Licenses and Restrictions
Date and Time: 3/17/20 – 12-1 pm CST
If you have ever prepared a patent application that lists inventors from multiple countries, you are probably aware that many countries place restrictions on an inventor’s ability to file a patent application in a foreign country. This webinar will examine foreign filing restrictions and licenses in various countries around the world. Specific topics to be covered include:
• Determining when a U.S. foreign filing license is required, how to request a U.S. foreign filing license and how to request a retroactive foreign filing license in the event a U.S. foreign filing license is not timely requested;
• An examination of the unique foreign filing license requirements in countries such as China, India, Russia, as well as others; and
• Strategies and tips for avoiding foreign filing mistakes
Filing Patent Applications Internationally including Best Practices
Date and Time: 2/12/20 – 12-1 pm CST
This webinar will explore the in’s, out’s and oddities of filing and prosecuting your patent application in jurisdictions outside of the U.S. Topics to be covered include: (1) the Paris Convention and its importance in foreign filing; (2) options available for foreign filing, including a detailed examination of the PCT process and how it can be used to facilitate the granting of an application in a country of interest; and (3) filing requirements and strategies for prosecuting applications in Australia, Brazil, Canada, China, Europe and Japan.
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Making the most of academic drug target discoveries
When: Wednesday, October 23, 2019 from noon to 1 pm CST
Presented by: Lisa Mueller of Casimir Jones and Carole Burns of Johns Hopkins University
The explosion of new technologies and research techniques, and encouragement from funding agencies for academic institutions to undertake more translational research, has led universities to devote greater resources toward applied drug discovery activity. Universities are now discovering an increasing number of “drug targets” and, as a result, lead companies in the discovery of novel drug targets. This webinar will examine two key problems often encountered by universities and their tech transfer offices in relation to such activities. These problems are: (1) determining whether there is value in filing patents on novel drug targets; and (2) how to progress the development of new drugs against these targets to best position such drugs for licensing to pharma and biotech companies.
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When Does a Disclosure Qualify as a “Printed Publication” under 35 U.S.C. § 102?
When: Wednesday, November 13, 2019 from noon to 1 pm CST
Presented by: Jeff Childers of Casimir Jones
One recurrent issue faced in university tech transfer offices is when do certain activities by faculty inventors impact U.S. and foreign patent rights. This webinar will take an in-depth look at what type of disclosures qualify as “printed publications” under 35 U.S.C. § 102. We will dispel common misconceptions regarding when a disclosure rises to the level of a printed publication, which will aid technology transfer professionals in their decision-making process of whether to go forward with pursuing domestic or foreign patent protection on university inventions.
When Does a Disclosure Qualify as a “Printed Publication” under 35 U.S.C. § 102?Listen Now
Inventorship Issues in University Technology Transfer
When: Wednesday, December 12, 2019 from noon to 1 pm CST
Presented by: Lisa Mueller and Jeff Childers of Casimir Jones
Ownership of a U.S. patent is based on inventorship and an inventor is an owner of the claimed invention unless it is assigned to another entity. Thus, the correct naming of inventors is important, and the improper naming or failure to name the proper inventors can result in inventorship disputes, expensive litigation and/or invalidation or unenforceability of a patent. This webinar will examine inventorship issues in university technology transfer, particularly, the differences between inventorship and authorship, how to determine inventorship in provisional and non-provisional applications, navigating the tricky issues of joint inventorship, methods for correcting inventorship, and inventorship issues arising in artificial intelligence.
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