Akin Gump IP Lawyers Author Article for The Legal Intelligencer on Patent Term Extensions and Adjustments

Three members of the intellectual property practice at Akin Gump—partner Matthew Pearson, senior counsel Angie Verrecchio and counsel Jason Weil—have written the article “Pharmaceutical Patent Term Extensions and Patent Term Adjustments: Choose Wisely,” which was published by The Legal Intelligencer. The article discusses how the term of a patent can be extended or adjusted, and how recent case law may impact whether a patentee chooses to seek patent term adjustment or extension when both options are available.

The authors begin with a look at how competitors can try to shorten a patent’s term, such as by alleging “that an asserted patent is invalid because of obviousness-type double patenting (OTDP). … a judicial doctrine that prevents a patentee from obtaining multiple patents with claims that are obvious variants of one another, but have different expiration dates.” It is possible to overcome such a challenge, the authors write, and it is also possible to statutorily adjust or extend that patent’s term, although not without risks.

In light of recent case law, Pearson, Verrecchio and Weil suggest that “innovators seeking to protect a new drug product should carefully select the patent for which they seek PTE [patent term extension].” They add that if a patent owner “has more than one patent that sufficiently covers its product, it should consider seeking PTE for a patent that does not already have [patent term adjustment],” due to U.S. Patent and Trademark Office delay.

To read the full article, please click here.