December 3, 2021

Volume XI, Number 337

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December 03, 2021

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December 01, 2021

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EXCLUSIVE RIGHTS: Intellectual Property — Don’t Get Caught Double Patenting! [PODCAST]

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz patent attorneys Lily Zhang and Alex Trimble, PhD, discuss double patenting, a complicated and sometimes confounding area of patent law. They break it down in layman’s terms even a non-patent attorney can understand. They highlight the risks of, and ways to avoid being hit by, double patenting rejections – and how to overcome them if they arise.

Among other topics, Lily and Alex discuss:

  • The two kinds of double patenting – same invention and obviousness-type double patenting (ODP)

  • Common scenarios in which ODP arises

  • Using terminal disclaimers for overcoming ODP rejections

  • The legal ramifications of using terminal disclaimers

  • When terminal disclaimers are the right option

©1994-2021 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume XI, Number 294
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About this Author

Lily Zhang Intellectual Property Attorney Mintz Levin
Associate

Lily’s practice is dedicated to intellectual property, with an emphasis on patent preparation and prosecution and providing clients with strategic insights in portfolio management. She also provides technical support to the patent litigation team.  She has experience in a broad range of technical areas, including artificial intelligence and machine learning, 3G and 4G wireless technologies, databases, battery composition and production, network hardware and software, cyber security and cryptography, electronic payment systems, bioinformatics, robotics, optics, 3D printing and laser...

858.314.1577
Alexander Trimble Patent Attorney Mintz
Member

Alex is an experienced patent attorney with a diverse client base. He provides leading pharmaceutical companies with strategic legal and business advice pertaining to patent prosecution and patent portfolio management. Alex regularly evaluates issues related to patentability and freedom-to-operate. He holds a PhD in organic chemistry from UC Berkeley and focuses primarily on chemistry pertaining to pharmaceuticals, chemicals, materials, and polymers.

Alex is a registered patent attorney who advises clients on matters pertaining to patent prosecution and patent portfolio management....

415-432-6018
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