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DELAWARE BIO
EVENTS ____________________
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THURSDAY, NOV. 12
Delaware Biotechnology Institute
15 Innovation Way, Newark, DE.
7:30 a.m. - 9:00 a.m.
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OTHER UPCOMING
EVENTS ____________________
OCTOBER 1
15 Innovation Way
Newark, DE 19711
9:00 a.m. - 5:00 p.m.
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OCTOBER 1
100 David Hollowell Drive
Newark, DE 19716
8:00 - 6:00 p.m.
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OCTOBER 11 - 14
New Cells for New Vaccines IV
Hotel du Pont
11th & Market Streets
Wilmington, DE 19801
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NOVEMBER 4
Calibration & Validation Clinic
Hosted by VWR
15 Innovation Way
Newark, DE 19711
12:00 - 2:30 p.m.
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NOVEMBER 16 - 17
Biotech 2009
Pennsylvania Convention Center
1101 Arch Street
Philadelphia, PA 19107
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MEMBER SPOTLIGHT
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Vial-ette 4 U - One Solution For all Your Reagents & Samples Handling
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San Diego Daily Transcript --- April 28, 2009
Maximizing IP value in an economic downturn: A paradigm switch
By GWILYM ATTWELL, Fish & Richardson
The country's economic woes have corporate America slashing budgets wherever possible, and legal costs are no exception. According to a recent survey in IP Law360, almost 75 percent of 115 general counsel surveyed said their law department's budget would be cut in 2009.
The short-term gains from making cuts in intellectual property may be offset by the long-term ramifications. In good times and bad, your IP program should have two goals: protect your IP and enforce your patent rights. Careful management of your current and potential IP can help ensure that your money is well spent in support of your IP goals.
Quality over quantity
In these difficult times, companies are wise to take a "less may be more" perspective when it comes to IP. This is likely a paradigm switch for many. In good times, the strategy of patenting every invention to ensure protection may be the best strategy. Tough times, however, call for new approaches.
Companies must now ask the question, "How do we get a smaller and more profitable patent portfolio versus just cutting back?" Your newly defined strategy should be one that protects your core IP assets and inventions while staying aware of IP in your industry to ensure that your IP continues to hold its value.
The characteristics of an effective IP program strategy can be summarized as:
1. Prompts the development, acquisition, maintenance and licensing of IP assets.
2. Treats each piece of IP as something that furthers company goals -- conferring value to its owners, shareholders and customers.
3. Minimizes expenses in pursuing patents that will create no strategic value to the company.
4. Focuses on quality instead of quantity. Because your patent strategy should be closely aligned with your company's goals and direction, it is crucial that senior management be responsible for developing and implementing IP strategy and valuation. When critical IP matters surface, senior management should get involved early.
Portfolio management
When analyzing your current IP program to decrease costs while maintaining an effective strategy, consider using a triage approach.
New applications -- A critical analysis of the inventions that you may be filing patents on is in order. Do these inventions further the company's goals and create strategic value? Establishing a team of cross-functional experts in your company to help with such an analysis will be beneficial. Ideally, such a team will include both market innovators -- those keenly in-tune with what the market is doing -- and traditional innovators -- those who examine an invention with a technical perspective.
Look for holes in your portfolio and determine which inventions will best complement existing patents. Determine which countries/jurisdictions you must file in to ensure protection and when the best time is to file. Also determine when you should re-evaluate your decisions. As the company's goals shift, the value of your inventions to the company may also change.
Pending applications -- Obtaining patents on technology that doesn't mirror your goals should be halted. However, it is important to determine where the patent is in the application process before making this decision. If a patent is close to being awarded, it may be better to continue in the process and then determine what to do with the technology.
Issued patents -- Too much money can be spent on maintaining IP that is without continuing value. A careful analysis is needed to determine which patents no longer foster the company's goals. Licensing or selling this unused technology are viable ways to gain value from patents that are no longer of strategic necessity.
Invention disclosure
As your company continues to develop new technologies, careful analysis of which inventions should be patented is critical, especially when funds for patent prosecution are tight. Developing an "intake process" that analyzes each invention and determines how each fits within the company's strategies and which patents will maximize value is essential. An internal patent committee that can act as a "jury" to review and determine which inventions are patentable is recommended. This jury should include your company's senior technology manager, in-house counsel, marketing/business development manager and perhaps outside patent counsel. The primary duties of this team should be to cull down the list of potential inventions into ones that are ideally patentable. The group should meet periodically, at least once per quarter and be nimble to adapt to changes in your marketplace and your company.
Patent mining
Mining through your current portfolio and pending applications to determine what patents have value is an important exercise. Some patents that you may think of as a "lump of coal" could actually be "diamonds in the rough," as your unused patents may hold value for others. Selling and/or licensing your unused patents may be a viable option. However, with the effective life of a patent on average being only five years from the issue date, the clock could be ticking. Only 5 percent of patents generate licensing revenue, so be realistic in assessing if anyone else would want what you don't want.
__________________________________________________ Attwell is a principal with Fish & Richardson. His practice emphasizes U.S. and foreign patent prosecution, opinion work, due diligence studies and client counseling in the fields of biotechnology and pharmaceuticals.
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