Drafting successful pharmaceutical patents is complex and there are many pitfalls and risks to be aware of. You need to ensure you’re maximising the protection for your, and your client’s, pharmaceutical inventions thorough both primary and secondary pharmaceutical patents.
The highly complex area of pharmaceutical patents is looked at in detail in this course. The expert faculty will take you through the key differences between the European and US systems and how these can impact your patents. They will explore the latest strategies and give you useful insights and practical solutions to your drafting issues. By understanding the importance of aligning your patent and regulatory strategies, you will improve your pharmaceutical claim drafting skills to the best advantage.
The practical claim drafting exercises included in the course will give you an opportunity to get to grips with the information in a safe environment and under the guidance of the trainers. They will help embed what you have learnt so that it can be taken back to the workplace and put into practice. As well as receiving inside knowledge and top tips and advice from the highly experienced professionals from industry and private practice, the course also provides a valuable opportunity to network with others in similar roles from different companies. By attending, you can discuss your challenges with colleagues and our expert faculty and find solutions to your questions.
Key topics covered in this intensive training programme include:
- Drafting primary patents and secondary patents
- Key differences between drafting for Europe versus the US
- Claim drafting strategies for antibodies and other biologics
- Drafting claims that ‘follow the label’
- Drafting patent applications with sufficient supporting data - how much is enough?
- Aligning your patent strategy with regulatory issues
Programme day one
Summary of the course
- Overview of the two-day programme
- Patentability basics
Drafting primary patents - small molecules
- Protecting pharmaceutical compositions
- Protecting methods of treatment
- Protecting medical use claims (first, second and Swiss-type)
Drafting primary patents - biologics
- Drafting sequence disclosures
- Protecting antibodies, stem cells and microorganisms
- Drafting generic and species claims
- Drafting functional claim language
- Protecting gene therapy inventions
Primary patents workshop
- Selection inventions
- Drafting claims for infringement
- Distilling down the invention disclosure
- Patenting later developments
- Practical examples and drafting exercises
Drafting with a focus towards interplay with regulatory issues
- Patent term extension and SPCs
- Regulatory issues and data protection - drafting to ‘follow the label’
- The ANDA litigation process and enforcement of listed patents
- Overlay of patent protection with FDA exclusivity - the FDA Orange Book
- Strategies for protecting biologics
Programme day two
Data needed to support patent applications
- What data must be included?
- When must the data be included?
- Consideration of post-filing date data
- US written description
- The importance of correct data - avoiding inequitable conduct
- Protecting dosage regimes, modes of administration, patient groups
- Protecting polymorphs (crystals, enantiomers, salts)
- Protecting metabolites
- Protecting new formulations
- Protecting process patents
- Protecting methods of diagnosis and surgery
Secondary patents workshop
- Establishing patentability: inventive step vs non-obviousness
- Strategies for using post-filing evidence
- Practical examples and drafting exercises
Summary and final questions
Finnegan’s Washington, DC Office
Dr. Amanda Murphy is a Partner in Finnegan’s Washington, DC Office and focuses her practice on strategic client counseling, portfolio management, and patent prosecution for a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.
Amanda provides patentability opinions, prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has experience in prosecuting inter partes and ex parte reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe. In addition to her patent counseling and prosecution practice, Amanda also routinely represents petitioners and patent owners in inter partes review (IPR) and post grant review (PGR) proceedings before the PTAB. As part of that practice, Amanda works with experts to develop technical and legal bases for challenging or defending issued patents, and manages the preparation of substantive written submissions. She also provides strategic advice and pre-litigation analysis and prepares freedom-to-operate, enforceability, and infringement opinions.
Managing Partner ,
Finnegan’s European office in London
Dr. Anthony Tridico is the Managing Partner of Finnegan’s European office in London and has over 20 years of experience protecting pharmaceutical inventions. Anthony practices all aspects of intellectual property law, from strategic patent portfolio management to litigation including strategic client counselling, due diligence investigations, patent portfolio management and analysis, prosecution and drafting, and appeals and oral hearings at the Patent Trial and Appeal Board (PTAB). He also offers expertise in representing clients in the specialised areas of FDA Orange Book listing of patents, and patent term extensions. Anthony has served for over 15 years as adjunct professor at Georgetown University Law School teaching patent law and patent prosecution and he has been recognized by Intellectual Asset Management as a leading patent prosecutor in the United Kingdom and Europe in the IAM Patent 1000, and as a top IP strategist by the IAM Strategy 300. Managing Intellectual Property named him an “IP Star” in the United Kingdom.
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