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BPLA Biotechnology Committee Double Patenting: Not as Simple as a Terminal Disclaimer
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When: March 28, 2017
11:30 am
Where: WilmerHale
60 State Street
Boston, Massachusetts  02109
United States
Contact: BPLA Biotechnology Committee

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Biotechnology Committee Luncheon & Seminar

 Double Patenting: 
Not as Simple as a Terminal Disclaimer


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;
  • application filing strategies to maximize portfolio value while avoiding or minimizing double patenting risks;
  • reassessing the value and patent term of existing and future license agreements;
  • the role of double patenting in assessing freedom to operate; and
  • using double patenting as an additional avenue to challenge patents in litigation and how to insulate against such challenges. 


Jeffrey Jacobstein, Finnegan

Matthew Van Eman, MD, McCarter & English




Tuesday, March 28, 2017
 11:30 pm - 1:00 PM




We are applying for 1.0 hours of CLE credit in New York
which many other states accept through reciprocity.

Cost including CLE credit:

Members $30 / Non-Members $50

For financial aid, please contact




60 State Street

Boston MA 02109



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


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

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