Event

American Conference Institute (ACI): 17th Advanced Summit on Life Sciences Patents

Hosts

Rob Sullivan, a patent attorney in Fish's New York office, will teach a workshop on Patents Around the World Working Group: How to Execute a Cohesive International Patent Prosecution Strategy during American Conference Institute's (ACI) 17th Advanced Summit on Life Sciences Patents, May 15-17, in New York, NY.

By bringing the collective knowledge and practical experiences of leading in-house IP counsel, patent prosecutors and litigators, the USPTO, and policy experts from both sides of the Atlantic, this event will provide attendees with comprehensive knowledge and benchmarking opportunities to ensure that they are leading the way in patent protection for their company and clients.

Workshop A - Patents Around the World Working Group: How to Execute a Cohesive International Patent Prosecution Strategy
Wednesday, May 15, 9:00AM - 12:30PM

Speakers:

  • Rob Sullivan, Principal, Fish & Richardson
  • Tjibbe Douma, Partner, Dentons

In this session, leading patent practitioners will provide you with a comprehensive and in-depth global IP overview to assist you in protecting your IP and minimizing risk when filing patents internationally. Benefit from our session leaders in-depth analysis of patent laws around the world on a region-by-region basis.

Topics to be discussed include:

  • Comparing and contrasting the standards of patentability in the US with those at other major international patent offices
    • What is patentable?
    • Filing requirements
    • Claim construction
    • Availability of patent extensions
    • IP and regulatory data protection and exclusivity
    • Brand versus generic considerations
    • Pricing factors
    • Compulsory licensing
    • Bolar-type safe harbor provisions
    • Privilege concerns
  • Going through common rejections in the US (subject matter patentability, obviousness, indefiniteness etc.) and determining how they might succeed or fail in other key international patent offices
  • Procuring and enforcing life sciences patents worldwide on a cost-effective basis
    • Timing and logistics of filing: When to file to maximize exclusivity and what are the expected costs?
    • Determining the locations where it is most and least important to have patent protection in place
    • Drafting applications that satisfy the requirements of different locations
    • Coordinating between lawyers on the ground internationally and with your U.S. teams
  • Spotlight on the EU: how has the establishment of a Unified Patent Court affected life sciences IP strategies?
    • How will the Court work?
    • What actions should companies take now to prepare for implementation?
    • Overview of recent EU decisions affecting life sciences
    • Keeping SPCs and PTE in mind
  • Factoring in the impact of Brexit

American Conference Institute's (ACI) 17th Advanced Summit on Life Sciences Patents
May 15-17, 2019
Park Lane Hotel
36 Central Park South, NY, NY