Patent strategy in the life sciences Flashcards
patents are limited in what they offer
– The ability to (threaten to) sue
– The ability to promise not to sue
– The ability to sell the right to sue
true or false: a patent does not allow you to do anything with your invention
true
why is the right to sue uncertain with a patent
– A patent may be successfully attacked if you try to use it
– In US, between 43% and 46% of contested patents (those that make it to court) were held
invalid for the last few decades
your ability to sue depends on what when you have a patent
-how much activity your patent covers
-if narrow, you may not succeed in preventing others from using slighlty different technology
-resources
why is your ability to sue also constrained by resources
patent litigation costs 3.5 million$ per side
Patents work by helping organizations bridge gap between….
invention and innovation
what is invention
the process of coming up with a concrete new idea
what is innovation
an actual change in the products/services available to end-users
While patents provide rights over inventions their purpose is to keep ….
others away so that the organization can invest in
the process leading to innovation
why is innovation difficult and complex
- it usually fails for reasons other than the value/usefulness of the idea
-Poor business strategy - Unreasonable expectations re value
- Failure to partner
- Failure to address risk (time, liability, etc.)
what is most likely to make a patent sucessful
A so-so idea with good management, marketing and reasonable expectations likely to have more success than a great idea with one of these missing
Public Research and Patents:
Ebola vaccine
Researchers at Canada’s National Microbiology Laboratory a recombinant
virus to prevent Ebola
* NML patented vaccine and licensed it to
small US corporation
* US firm did nothing to advance vaccine
development
Ebola vaccine: patent
- NML was going to cut funding to the vaccine except one lone researcher, Judie Alimonti, on a
short-term contract kept working to ensure production of clinical grade vaccines - When 2014 Ebola outbreak erupted in West Africa, Canada was able to contribute the vials
that Alimonti had produced - These had close to 100% efficacy and saved lives
ebola vaccine part 2 patents
- Meanwhile, small US firm sold to larger firm that gave rights to Merck
- None of these did anything up to 2014 except reap financial rewards that followed
- Merck was 2 years late on
getting FDA approval - If not for Alimonti, there would not have been clinical trials and lives would have been lost
- Patents were distraction, almost dangerously so
Universities and Patents
They do poorly on the former – 52% of universities lose money on just running a tech transfer office
