Inter Partes Review Strategy and Trends in the Life Sciences Industry: Implications for Patent Prosecutors and Litigators

28 May 2015 08:30 a.m. - 10:00 a.m. PDT

Jennifer Dubman
(415) 268-6742

Over 2,500 petitions for inter partes review (IPR) have been filed since IPR became available as a new procedure for challenging patent validity. However, only a small percentage of those petitions have been filed on biological/pharmaceutical patents and those at issue in ANDA, or Hatch-Waxman, litigation. Although challenging patents using the IPR process has been a highly effective strategy in general, the success rate for those challenging pharmaceutical and life sciences patents has fallen well short of the average. 

This seminar will highlight several concrete strategies for IPR petitions in pharmaceutical and biotechnology cases. With the increasing number of orders and final decisions issuing from the Patent Trials and Appeals Board (PTAB), there is much for patent prosecutors and litigators alike to learn. An Administrative Patent Judge will also join us for insights from the USPTO.

Topics Will Include:

  • How life sciences companies are integrating IPRs into their patent litigation strategies and patent portfolio management
  • The types of claims and challenges involved in life sciences IPRs
  • The use of IPRs in ANDA/Hatch-Waxman litigation
  • Factors to consider in choosing ex parte reexamination, IPR, or litigation as the best approach to challenging validity in life sciences cases
  • The interplay amongst IPRs, prosecution, and litigation, including whether or not to institute an IPR and its potential impact on ongoing prosecution and litigation


  • Tina E. Hulse, Administrative Patent Judge, Silicon Valley USPTO
  • Michael Jacobs, Chair, Life Sciences Practice Group, Morrison & Foerster LLP
  • Matthew Kreeger, Partner, Morrison & Foerster LLP
  • Cary Miller, Partner, Morrison & Foerster LLP

For more on inter partes review, please visit our practice page for additional information.



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