FOCUS DAY: 13 MARCH 2012 - Separately Bookable
The US Patent Reform for Life Science Companies
8.30 Registration & Coffee
9.00 Chair’s Welcome & Opening Remarks
9.10 Impact of the New Patent Law: An Overview of the America Invests Act (AIA)
- Examining the specific provisions of the patent reform in The Leahy-Smith America Invents Act – what are the key developments?
- Discussing the statutory change for the Life Sciences IP market
- Does the reform go far enough?
- What effect will the US patent reform have on overseas pharma companies?
9.40 Analysing the New “First-to-File” System and “Grace Period” and its Impact on the Life Science Industry
Steven Lendaris, Special Counsel, Baker Bott s (US)
- What does “first-inventor-to-file” mean in the AIA?
- Examining how the U.S. “grace period” is being modified by the AIA
- When will these changes come into effect and what can be done now in anticipation of this transition?
- Timing of your filings - are you better off fi ling under the current or the new rules?
- Identifying the pros & cons of fi ling ahead of the effective date and their implications for the biotech industry
- Balancing compliance with the new rules and the existing written description & enablement requirements
- How are the written description & enablement requirements being applied in life science cases?
- When should you fi le the case that will establish your earliest priority date?
- How can you maximize the benefi t of the new grace period when addressing the written description & enablement requirements?
10.35 Refreshment Break
11.05 Post-Grant Review Proceedings: Identifying Opportunities and Risks
Anthony Tridico, Partner, Finnegan (Belgium)
- An overview of the post-grant review proceedings
- Examining the potential impact on life sciences companies
- How will the enforcement landscape change? What new risks and opportunities might arise?
12.00 Keynote Address
Identifying Changes in USPTO Practice
Jasemine Chambers, Ph.D.
Deputy Administrator for Policy and External Affairs,
United States Patent and Trademark Offi ce (USPTO)
- Examining the new fee and funding structure
- Reviewing prioritized examination
- Addressing submission of prior art and supplemental examination
- Updates on USPTO-led studies
12.45 Networking Lunch
13.45 Identifying the Potential Impact of the AIA on Litigation of Patent Cases in US Courts
Rouget F. (Ric) Henschel, Partner, Foley & Lardner LLP (US)
- Will we see litigation costs drop after full implementation?
- Can we expect greater predictability in patent litigation outcomes?
- Which side stands to gain more, the patentee or the accused infringer?
- Advantages for defendants (accused infringers) and for plaintiffs (patentees)
14.30 Contrasting the US and the European Patent System: Are the Opposition Procedures Proposed in the America Invest Act Competitive?
Thomas Kowalski, Vedder Price (US)
Petri van Someren, Partner, Arnold + Siedsma (Netherlands)
- Overviews of European and US oppositions, and differences from a European perspective
- How does the US “first-inventor-to-file” / “first-to-disclose” system differ from the European first-to-file system?
- Time limit of nine month to file an opposition in Europe vs time limit for post-grant oppositions but not for inter partes actions in the AIA - a new uncertainty?
- Different standards in US post-grant oppositions, inter partes actions and district court litigation - selecting the US forum
- Dealing with all oppositions together in a single proceeding in Europe vs. a possible succession of individual US cases – coping with extra work and costs
- Considerations of US Privilege and Work Product issues
- avoiding very serious pitfalls of European practitioners advising on US oppositions, inter partes matters and litigation
- Analysing advantages / disadvantages of the US system:
- Opponents must demonstrate likelihood that patent claim is invalid
- “estoppel” provisions for subsequent challenges
15:30 Refreshment Break
16.00 Discussing Potential Challenges and Opportunities for European Life Science Companies
Andre Bourgouin, VP of Corporate IP, Ipsen Pharma
(France)
Dr. Jürgen Schneider, Vice President
Global IP & IP Litigation, QIAGEN GmbH (Germany)
Prof. Dr. Li Westerlund, Vice President Global IP,
Bavarian Nordic Group (US)
Dr. Jochen Pagenberg, Partner,
Bardehle Pagenberg (Germany)
- What technical and practical challenges will you have to expect as life science IP owner
- Will the AIA law pave the way for more homogeneous international patent strategies?
- Will the AIA reduce patent prosecution delays?
- is there even a risk of a new USPTO log-jam of oppositions?
- What impact will the accelerated application process have on the industry?
- How are the US developments infl uencing the move to a common European patent court?
- Is a central European Court of Appeal possible in view of all the discrepancies in infringement doctrines in different European countries?
- Developing and maintaining a successful global patent strategy
- Examining best practice strategies on how to protect and enforce your IP rights
- Developing a more proactive filing strategy
- How to use disputes to actively strenghten your patents in the USEuropean countries?
17.30 Chair’s Closing Remarks & End of Focus Day
Conference Details