written description requirement & how entrepreneurs can monetize their ip, and what ip...
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Written description requirement &
How entrepreneurs can monetize their IP, and what IP strategies might work
against major players in healthcare and biotech industries
May 8, 2010 Myers Wolin, LLC 1
Hay Yeung CheungMyers Wolin, LLC
Entrepreneur’s Day May 8, 2010
Written Description Requirement• Independent of the Enablement Requirement• Intended to ensure that the inventor was actually in
possession of the invention at the time of the application was filed.
• Application specification (“spec”) provides support for the claimed invention including each element and/or step.
• “spec” “speculation”
May 8, 2010 Myers Wolin, LLC
Written Description Requirement• Compliance with the written description requirement
is a question of fact which must be resolved on a case-by-case basis. Standard: Whether there is sufficient written description
to inform a skilled artisan that applicant was in possession of the claimed invention.
• Typical written description requirement issues: Whether new or amended claims are supported by the
description of the invention in the application as filed. Whether a claimed invention is entitled to the benefit of
an earlier priority date.
May 8, 2010 Myers Wolin, LLC
Written Description RequirementExamples of non-compliance of written description
requirement:– In an unpredictable art, such as biochemistry, describing
only one member within the group, where the group contains a wide variety of members.
– The claims require an essential or critical feature which is not adequately described in the specification.
Tips: Obtain as much information as possible from inventors,
such as partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function.
May 8, 2010 Myers Wolin, LLC
How entrepreneurs can monetize their IP, and what IP strategies might work
against major players in healthcare and biotech industries
May 8, 2010 Myers Wolin, LLC 5
Example applications in this field may range from genetic engineering, CT and MRI scanners to applications allowing physicians to remotely diagnose or view medical records of patients.
Companies that invest in biotech & healthcare IT related applications include: Pfizer, Genentech, GE, Philips, EMC, NetApp, Oracle, etc.
May 8, 2010 Myers Wolin, LLC 6
Class 128, Surgery (includes Class 600)
First-Named Assignee 2005 2006 2007 2008 2009 Total
INDIVIDUALLY OWNED PATENT 260 305 209 194 181 1149
OLYMPUS CORPORATION 32 31 30 25 39 157
MEDTRONIC INC. 21 41 26 20 29 137
GENERAL ELECTRIC COMPANY 13 19 25 34 42 133
CARDIAC PACEMAKERS, INC. 15 24 25 23 43 130
BOSTON SCIENTIFIC SCIMED, INC. 8 19 13 18 35 93
RESMED LIMITED 20 28 14 10 18 90KONINKLIJKE PHILIPS ELECTRONICS N.V. 16 20 13 20 20 89
SIEMENS AKTIENGESELLSCHAFT 10 7 14 17 41 89
SCI-MED LIFE SYSTEMS, INC. 23 27 18 11 4 83
Number of Patents
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Class 128, Surgery (includes Class 600)
May 8, 2010 Myers Wolin, LLC 8
Class 435, Chemistry: Molecular Biology and Microbiology
First-Named Assignee 2005 2006 2007 2008 2009 Total
INDIVIDUALLY OWNED PATENT 121 155 122 100 141 639
UNIVERSITY OF CALIFORNIA 54 50 59 29 33 225
GENENTECH, INC. 24 44 39 14 20 141
AJINOMOTO COMPANY INCORPORATED 16 23 42 31 28 140
E. I. DU PONT DE NEMOURS AND CO. 10 35 42 22 27 136
US DEPARTMENT OF HEALTH & HUMAN SERVICES 17 35 32 21 23 128
APPLERA CORPORATION 46 33 23 17 0 119
WISCONSIN ALUMNI RESEARCH FOUNDATION 15 18 23 20 29 105
GENENCOR INTERNATIONAL, INC. 20 21 17 32 10 100
MILLENNIUM PHARMACEUTICALS, INC. 26 26 23 8 14 97
Number of Patents
May 8, 2010 Myers Wolin, LLC 9
Class 435, Chemistry: Molecular Biology and Microbiology
May 8, 2010 Myers Wolin, LLC 10
Class 424, Drug, Bio-Affecting and Body Treating Compositions (includes Class 514)
First-Named Assignee 2005 2006 2007 2008 2009 Total
INDIVIDUALLY OWNED PATENT 262 304 262 221 234 1283BRISTOL-MYERS SQUIBB COMPANY 75 111 88 88 92 454
PFIZER INC. 128 84 72 51 56 391
WYETH 42 69 76 72 94 353
ASTRAZENECA AB 65 72 62 76 63 338
HOFFMANN-LA ROCHE INC. 34 48 67 73 83 305
MERCK + CO., INC. 35 48 67 61 93 304
UNIVERSITY OF CALIFORNIA 38 58 46 44 42 228
ELI LILLY AND COMPANY 40 42 52 44 48 226
SCHERING CORP. 37 36 47 43 61 224
Number of Patents
May 8, 2010 Myers Wolin, LLC 11
Class 424, Drug, Bio-Affecting and Body Treating Compositions (includes Class 514)
Individual inventors are by far the largest producers of patents.
However, big corporations are much more successful in deriving revenues from patents.
- Resource- Infrastructure- Experience- Industry Network
12May 8, 2010 Myers Wolin, LLC
Monetizing IP
• Value of the IP to the company– Market exclusivity
– Licensing revenue
– Collaborative relationships
– Position company for purchase and/or investment
– Advertising/Marketing value
• IP Valuation– Discounted Cash Flow Model
– Black-Scholes Option Pricing Model
– others
13May 8, 2010 Myers Wolin, LLC
Packaging and Pooling• High tech product may
contain many components, and each component may be covered by many patents.
• Well packaged portfolio is more valuable.
• Patent pool can reduce costs and risks.
14May 8, 2010 Myers Wolin, LLC
Create and Maintain an IP Strategy
• Establish an IP budget• Designate a liaison• Educate engineers and management• Engineers should be reminded to
protect their innovations• Management should encourage
innovation• Proactive management of pipeline• 1-5-10-20 year horizon• Establish a public reputation of an IP
rights holder, defender and enforcer
15May 8, 2010 Myers Wolin, LLC