Media Coverage of BIO’s Intellectual Property Conference in Seattle

Stanford v. Roche: An Academic/Industry Collaboration Gone Wrong

A Landmark Case: The Aftermath of Myriad Genetics

Ethical Issues: Staying in the Frying Pan and out of the Fire

BIO’s Intellectual Property Counsels Committee Seattle Meeting Topics

Join us for BIO’s Intellectual Property Counsels Committee Meeting in Seattle April 13-15.  You can find the session topics below.

Whose Rights Are They, Anyway? Implications from and a Discussion on Stanford v. Roche

The pending Supreme Court review of Stanford v. Roche has brought out multiple perspectives on the disposition of ownership rights in federally funded inventions under Bayh-Dole. This session will explore the different interpretations of the Act’s provisions, and their practical implications for small business grantees or biotech companies who wish to collaborate with federal grantees.

A Landmark Case: The Aftermath of Myriad

This session will provide an update on the status of the case and the arguments that have been made by the various amicus groups, with particular emphasis on the US Government’s brief. We will also explore the impact of “gene patents” on up-and-coming technologies, especially whole genome/whole exome testing.

The Business Case for International Humanitarian Approaches to IP Management and Collaborations

Guest Speaker:

Erik Iverson, Associate General Counsel, Global Health, Gates Foundation

 

Best Practices in Research Collaborations: Joint Inventorship Pitfalls and Ethical Issues in Joint Representation

Don Ware of Foley Hoag will lead a discussion of pitfalls that may arise from prosecuting joint inventions conceived in the course of research collaborations among multiple institutions, including companies, universities and hospitals. Irene Pleasure, Associate General Counsel and Director of Patent Law at Genentech, will provide the in-house perspective on managing patent issues in research collaborations. David Hricik, Professor of Law at Mercer University School of Law and co-author of the treatises Patent Ethics – Prosecution (2009) and Patent Ethics – Litigation (2010), will address the professional responsibilities of patent attorneys involved in the prosecution of jointly-owned patent applications.

How to Stay in the Frying Pan and Out of the Fire: Hot Topics in Ethics for In-House IP Attorneys

Professor David Hricik and Barbara Fiacco of Foley Hoag will present on developments in ethics law for in-house IP counsel, including law firm conflict issues, how to protect the attorney-client privilege, ethical dilemmas created by 21st century social media, in-house counsel ethical pitfalls, and recent developments in IP malpractice law. The game-show format of this panel will be thought-provoking and fun, and will encourage audience participation. CLE Ethics credit is being requested.

Learn How to Navigate IP Landscape in Emerging Markets

BIO members have indicated a strong desire to hear about challenges and key developments in emerging markets such as Korea, China, Brazil and India. Specific challenges, lay of the land, how to negotiate better in these markets.

Double Patenting

This panel will include new developments on the Boehringer Ingelheim Federal Circuit Case, collaboration of multiple parties/how to avoid double patenting rejections and possible coverage of the Sun v. Lilly case.

The Next Chapter: Biosimilars Beyond the Health Care Reform Act

Will Policy Issues Slow the Pace of Implementation? Will the FDA Look to Europe for Guidance on Antibody Biosimilars? Emerging Markets, Emerging Strategies? The panel will cover recent developments in biosimilar, including policy issues based on move to repeal healthcare reform, the recent FDA public hearing on biosimilars, further debate on the meaning of exclusivity, the necessity of clinical trials, the possibility of interchangeability, and developments in Europe with respect to antibody biosimilars.

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BIO’s Intellectual Property Counsels’ Committee Spring Conference and Meeting: Seattle

Over the past eight years, BIO’s semiannual IP Counsels Committee Conference has become a popular and growing event among our members’ IP and legal professionals. Our upcoming 2011 Spring IPCC Conference in Seattle, WA on April 13-15 will be an excellent opportunity for IP professionals to hear, listen, and learn about current and projected topics related to biotechnology IP.

We invite you to join us in an informal, fun and informative setting to meet fellow in-house legal and IP professionals, to make new acquaintances, to reconnect with old friends in the industry, and to take home a wealth of information – and maybe some new ideas.

To Register

Session Titles:

1.  Whose Rights are They, Anyway?  Implications from and a Discussion on Stanford v. Roche

2.  A Landmark Case: The Aftermath of Myriad

3.  Best Practices in Research Collaborations: Joint Inventorship Pitfalls and Ethical Issues in Joint Representation

4.  How to Stay in the Frying Pan and Out of the Fire: Hot Topics in Ethics for In-House IP Attorneys

5.  Emerging Markets

6.  Double Patenting

7.  Biosimilars

New Blogger

Patently Biotech has a new writer.  My name is Roy Zwahlen and I am the new Intellectual Property manager at BIO.  I am an attorney and political science undergraduate and fascinated with intellectual property policy.  I am excited about this opportunity to enter the IP blogosphere.

My hope is to provide information about BIO’s IP activities including conferences and amicus briefs.  I also hope to reintroduce our IP staff and spotlight our BIO company members.  Finally, I plan on featuring guest writers from around the Biotech industry on IP issues. 

I am heading to Boston for BIO’s Intellectual Property Counsels Committee Fall Conference and Committee Meeting from Monday October 18^th to Wednesday the 20^th.  I plan on posting summaries of our panel discussions on the following topics:

• Evolving patent-eligibility standards for genes, biomarkers, diagnostics, and cell-based therapies;
• Valuation of IP when selling, licensing, or acquiring biotech patent rights;
• Present and impending changes to the way you practice before the PTO;
• How to defend your patent in an inter partes reexam;
• Whether inequitable conduct reform is close or elusive;
• Inducement, divided infringement, “abstract idea” exceptions, and other things that go “bump” in the dark if you own Biotech method patents;
• Tales from the edge and beyond: accounts of biotech investment in emerging market countries.  

Don’t Forget:

Follow us on Twitter @petepatentagent which will display our new blog posts.  Alternatively, the blog has a sign up mechanism to notify you by email when a new blog is posted.

IP Counsels Committee Conference in Phoenix Discusses Patent Reform

At the latest IP Counsels Committee Conference this past March, Q. Todd Dickinson, Executive Director of the American Intellectual Property Law Association (AIPLA), and E. Anthony Figg of Rothwell, Figg, Ernst & Manbeck, P.C., spoke to BIO’s member companies, universities, and law firm members about patent reform legislation.

Patent Docs‘ Donald Zuhn wrote about Dickinson and Figg on Patent Reform yesterday:

In the three weeks since the panel session took place, Senate Judiciary Committee Chairman Patrick Leahy (D-VT) has managed to get his bill voted out of Committee and placed on the Senate Legislative Calendar. However, as the patent reform debate readies for a move to the House, it is worth reviewing some of issues that were discussed at the IPCC panel session.

Why is it worth reviewing another one of BIO’s substantive conversations on the intellectual property system? This author knows, but you should visit Patent Docs, or call your Congressional representatives, for the details.

Patent reform and Re-examination

Patent reform legislation was introduced in the House and Senate last week.  Over the course of the next few weeks, we will look at specific portions of the legislation and its impact on biotech. Both the House and Senate bill expand re-examination proceedings.

Under the legislation, ex Parte re-examination requests can be based on “prior art consisting of patents, printed publications, or evidence that the claimed invention was in public use or sale in the United States more than 1 year prior to the date of the application for patent in the United States…” (Section 5 of the Senate bill pertaining to Section 301. Citation of prior art).

Moreover, the universe of patents which can be challenged in this manner has been expanded to any patent in force today. Under current law, only patents and printed publication are the basis for re-exam and only for patents filed on or after November 1999.

We ask you to consider:

• What is the impact of this expansion on biotech patents?
• What constitutes public use or sale in the context of biotechnology?
• Are clinical tests performed in public institutions one year prior to the filing of a patent application possible examples of “public use or sale”?

The PDF text of the legislation is available at these links (H.R. 1260) (S. 515).  Let us know your thoughts by responding to our post or emailing ip@bio.org.

BIO IP Counsels’ Committee Conference Now Open for Non-BIO Member Company Attendance

Since 2002, BIO’s IP Counsels’ Committee Conference was a private event where BIO members learned about the hottest topics in the industry: newly-introduced legislation on Patent Reform, draft BIO comments to the Patent & Trademark Office, experiences from fellow member companies and universities, all under the guise of a “fun” 3-day Conference & Meeting.

Well, the results are in: the Conference has always been fun, because of the savvy planning of BIO staffers who incorporate local activites and events into the Conference. For the Phoenix, Arizona Conference March 25- 27, 2009, the Conference is open for non-BIO member company attendance.

Its difficult to find a better value or source of news than the most active member companies and universities in the United States, all who are interested in learning about the future of topics like global health, new innovative technologies, R&D funding, and bioethics.

For more information visit the Conference website: http://bio.org/ipcc/index.asp.

Also: Patent Docs is talking about the Conference, too: http://www.patentdocs.org/2009/02/bio-ipcc-spring-conference.html.