Obtaining and Managing REMS Patents: What Patent Prosecutors Need to Know, USPTO and FDA Policies and Rules

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Tuesday, March 21, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide patent counsel on the issues surrounding Risk Evaluation and Mitigation Strategy (REMS) patents and listing in the Orange Book. The panel will discuss REMS patents and what patent prosecutors need to know. The panel will address the current efforts of the USPTO and FDA to determine what policy or rules will govern the listing of REMS patents. The panel will also discuss other issued patents relating to REMS and will offer best practices for obtaining and managing REMS patents.
Faculty

Dr. Feldstein focuses on U.S. district court litigation, primarily concerning the enforcement of U.S. patent rights and trade secret issues, and post-grant trial proceedings at the USPTO, including inter partes review (IPR) and post grant review (PGR). He maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients. He also provides opinions and strategic guidance to clients on infringement, validity, enforceability, and clearance matters. His practice encompasses a range of technologies, including pharmaceuticals, biochemistry, polymers, small molecule chemistry, optics, and medical and analytic devices.

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Ms. Brougher is a patent attorney who focuses on all aspects of services related to patents in the areas of biotechnology, pharmaceuticals and medical devices, including patentability opinions, due diligence, patent drafting, domestic and foreign patent prosecution, development and management of patent portfolios, and general client counseling during all phases of a product’s lifecycle, from concept to commercialization.
Her patent experience covers a variety of complex and innovative inventions involving small molecule drugs, biologics, cell-based technologies, compositions, drug formulations and drug delivery systems, immunotherapeutics, medical devices, diagnostic tests, nanotechnology, and immunology, particularly vaccines and antibodies. Ms. Brougher also has experience counseling clients on the Hatch-Waxman Act and is monitoring developments involving biosimilars under the Biologics Price Competition and Innovation Act.
Description
There is disagreement in the industry as to whether REMS patents are (or even should be) listable in the Orange Book. The Food and Drug Administration Amendments Act of 2007 gave the FDA the authority to require a REMS from drug manufacturers to ensure that the benefits of a drug or biological product outweigh its risks. Currently, there are 60 REMS filed with the FDA (REMS@FDA). In its Request for Comments in "Listing of Patent Information in the Orange Book; Establishment of a Public Docket" (FDA-2020-N1127), published in the Federal Register on June 1, 2020, the FDA asked questions concerning the listing of REMS patents. Then, in November 2022, the FDA requested comments on Joint USPTO-FDA Collaboration Initiatives, including what policy considerations should the USPTO and the FDA explore in relation to REMS patents. 87 Fed. Reg. 67,022 (Nov. 7, 2022).
REMS patents are currently in the spotlight as the case of Jazz Pharmaceuticals v. Avadel CNS Pharmaceuticals develops in the District of Delaware over U.S. Pat. 8,731,963, which is listed in the Orange Book and covers Jazz' product Xyrem® (1:21-CV-00691). Jazz sued Avadel for patent infringement and Avadel counterclaimed seeking a declaration ordering Jazz to remove the '963 patent from the Orange Book because it does not claim a method of using the approved drug. The Federal Trade Commission filed an amicus brief in support of Avadel, arguing that "REMS distribution patents as a category do not meet the requirements for Orange Book listing." The district court ordered Jazz to request delisting, but Jazz appealed, and the Federal Circuit granted a stay of the delisting order, pending appeal (No. 23-1186, Dec. 14, 2022).
Listen as our authoritative panel of patent attorneys discusses and examines REMS patents in the context of the Orange Book and what patent prosecutors need to know. The panel will discuss the current efforts of the USPTO and FDA to determine what policy or rules will govern the listing of REMS patents. The panel will discuss other issued patents relating to REMS and will offer best practices for obtaining and managing REMS patents.
Outline
- Current FDA OB Listing Policy
- Future policy direction
- Options for REMS patent holders
- REMS patent litigation
- Issued REMS patents
Benefits
The panel will review these and other high priority issues:
- What are the considerations for patent counsel when deciding whether to list a REMS patent in the Orange Book?
- What is the significance of the FTC intervention in the Jazz case?
- What best practices should counsel employ when obtaining and managing REMS patents?
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