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When: Tuesday March 28, 2017
11:30 AM
Where: Wilmer Hale
60 State Street
Boston, Massachusetts  02109
United States
Contact: BPLA Biotechnology Committee

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BPLA Biotechnology Committee

 Double-Patenting Seminar




Wednesday, March 22, 2017


Time: 11:30 AM - 1:00 PM


In recent years, the Federal Circuit has led a paradigm shift in the law of double patenting, starting with the decision in Gilead v. Natco and continuing with AbbVie v. Kennedy. These decisions have placed new limits on existing patents and future applications alike, potentially cutting into the terms of valuable patent estates in ways that were not anticipated when the patents and applications were originally filed. Patent practitioners, portfolio and licensing managers, and litigators all need to be aware of the evolving legal contours and their implications for prosecuting, licensing, and enforcing effective patent portfolios. In addition to covering the seminal cases, we will also review the legal landscape post-Gilead, as well as application of double patenting by the U.S. Patent and Trademark Office (USPTO). Among other topics, we will consider: 

  • Prosecution and claiming strategies to avoid double patenting rejections at the USPTO;
  • The role of double patenting when considering license agreements and conducting freedom to operate assessments; 
  • Using double patenting as an additional avenue to challenge patents in litigation.


Jeffrey Jacobstein, Finnegan 

  Matthew Van Eman, MD, McCarter & English




60 State Street

Boston, MA 02109



BPLA Biotechnology Committee Co-Chairs
Bo Han, WilmerHale
Rebecca McNeill, McNeill Baur




Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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