A crash course in IP strategy
"Publish, publish, publish!" Sound familiar? So to meet the researcher's wishes, do you scribble a patent application with lipstick on a napkin and send it in? At the seminar Patent Strategies in the Biotech Company, you will have the chance to find out why this might not be the best idea.
Know your patent’s strengths and weaknesses
Partnering with Big Pharma
Pitfalls in academic collaborations
Patent or publish or both?
“The researchers usually want to publish at a very early stage and from a business point of view this might pose a problem,” says Mattsson.
This is one of the pitfalls in collaborations with academia that he will talk about since the first patent filed is an important one.
Be exact from start
“The areas covered in that first application are the only ones that will be protected from that early date.”
This means that the “scribble to be able to publish strategy” has dangerous flaws, because areas in the published material that are not included on the napkin will not be covered by that first patent. Even worse is that since you have now published the material, it is no longer considered new, and it will therefore not be possible to patent those new parts later on. This is something of which many new actors on the market are unaware.
“A patent is a patent, end of story, seems to be a rather common attitude towards this field,” Mattsson says.
Freedom to operate?
Another area that is all too easy to forget about is what others are up to.
“A patent only keeps others from using your innovation. It does not automatically give you the right to market your innovation. Maybe someone else already has a very general patent on some other product or process that includes or relates to your innovation,” Mattsson says.
Taking the time to look into what other patent rights might exist on the market is called a freedom-to-operate analysis.
“Of course the big players do this – nobody is interested in investing the 800 million dollars now estimated to be the cost of bringing a new drug to the market if there is a risk of becoming dependent on someone else’s earlier patents.”
Doing a freedom-to-operate analysis can be as big a project as you let it, but keeping this risk in mind and at least doing a quick search of patent databases is recommended.
Mattsson’s advice is “do some initial research and then keep your eyes open and continue to collect more information as you go” .
Gathering experience and information is probably a good idea; according to Mattsson, it is essential to have your IP business in order when you aim to reach collaborations with Big Pharma. You need to know if someone else has patents that in any way relate to your technology and to your possibility for market introduction.
“It may not be the first thing they look at, but your IP situation might be a critical matter when it is time to sign the papers. Even if they don’t pull back from the collaboration, if there are flaws you may get a less favorable deal if your patents are not in order,” he says.
