auditing your ip david bradin friday, february 4 © 2011 hultquist ip. all rights reserved
TRANSCRIPT
INTELLECTUAL PROPERTY BASICS
• Patents
• Trademark/Service Marks
• Copyrights
• Trade Secrets
© 2011 Hultquist IP. All rights reserved.
VALUE OF INTELLECTUAL PROPERTY
• Companies Without IP Have Little or No Barrier to Competition
• Companies With IP Have a Value Proposition Even if They Cannot Raise Enough Cash to Get to “Bricks and Mortar”
• Licensing• Sale• Merger
© 2011 Hultquist IP. All rights reserved.
REASONS TO CONDUCT IP AUDITS
• Evaluate patent portfolio• Consider protecting new inventions• Fix identified problems• Prepare an IP budget• Identify properties to abandon (and save costs)• Prepare portfolio for acquisition - Contrast with Due Diligence - Ideally, the IP portfolio is always in proper form
for acquisition© 2011 Hultquist IP. All rights reserved.
WHO SHOULD PARTICIPATE IN AN IP AUDIT?
• Key Decision Makers
• Key Scientists
• General Counsel
• Intellectual Property Counsel
• Business Development
© 2011 Hultquist IP. All rights reserved.
IMPORTANT ASPECTS OF AN IP AUDIT
• Verify IP ownership• Consider whether commercially relevant
subject matter is claimed, and if not, whether there is support for an amendment
• Consider whether desired foreign filings and continuation/divisional applications have been pursued
• Consider whether all relevant prior art has been cited
• Ensure that the inventorship is correct
© 2011 Hultquist IP. All rights reserved.
FREQUENT DISCOVERIES IN AN IP AUDIT
• Claims do not cover commercial embodiments
• Foreign patent protection is inadequate
• Significant costs incurred for patent applications claiming commercially irrelevant technology
• Prior art was not cited
• Inventorship is incorrect
• New patent applications need to be filed
© 2011 Hultquist IP. All rights reserved.
IP AUDITS OF BIOTECH/PHARMA COMPANIES
• New patentable subject matter may be identified following each significant event:
- Lead generation/Lead optimization - Animal studies - Pre-clinical studies - Phase I - Phase II
- Phase III
© 2011 Hultquist IP. All rights reserved.
CONCLUSIONS
• Conduct periodic IP audits to ensure that your IP is in proper condition
• Involve key decision makers and outside patent counsel
• Use the IP audit as a budgeting tool
• Be ready for any business opportunity by making sure the IP is bulletproof
© 2011 Hultquist IP. All rights reserved.