[Webinar] Obviousness-Type Double Patenting and USPTO Proposed Rules for Terminal Disclaimers - Recent Court Treatment, Implications for Patent Strategy and Enforceability

Description

Recently, two courts relied on the decision in In re Cellect, but landed on opposite sides of the fence. The appeal of one of those decisions, by Judge Andrews in Allergan U.S. Inc. v. MSN Labs. Pvt. Ltd., was recently argued, and it appears the decision on ODP may be heading for reversal.

Also affecting double patenting, the United States Patent and Trademark Office (USPTO) published on May 10, 2024, its proposed rule that would change current terminal disclaimer practices and could significantly impact prosecution strategy as well as the enforceability of these patents.

Under the proposed rule, terminal disclaimers will need to include an agreement that the patent would be unenforceable if the patent claim to which it is tied is found to be invalid or unpatentable and appeals have been exhausted. Amongst the bar representing patentee, this proposal is very unpopular.

Listen as our authoritative panel of patent attorneys examines ODP, including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and will offer best practices, such as safe harbor/election/restriction and two-way test for ODP, for addressing ODP and terminal disclaimers.

Outline

1. Allergan argument and recent court treatment
2. Implications of the recent decisions on ODP practice
3. USPTO proposed rule
4. Best practices

Benefits

The panel will review these and other key issues:

• How do recent decisions impact the scope of ODP?
• What are the steps to defeat double patenting rejections?
• What are the steps to avoid ODP rejections?
• What potential impact will the USPTO proposed terminal disclaimers rule have?