Patenting Strategies

Pharmaceutical and biotechnology scientists face several major challenges in designing their research  

Can the claim made withstand court challenge Even though these areas of interpretations are beyond what a scientist would be expected to have any expertise, a keen understanding of the scope of claims is essential a patent with too broad a claim is not necessarily a good patent nor is a patent with too narrow a claim. The patent disclosure must support the claim adequately. 

Does the disclosure in the patent meet the legal requirements of patent allowance In the United States, the patentee must disclose a best mode, the best formula, and the best approach to use the research outcome. There is no need to disclose an industrial model but there should be a workable model. Keeping the information out of a patent can be a double-edge sword. 

Is it possible to create a sequel to a successful research product It is not unusual for the companies to keep some portions of the research aside and out of a patent to be able to claim it later. This can be a dangerous practice. If prior art appears in the interim, then all research is lost and even one s own patent will be taken as a prior art. 

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Do we have the creative climate, tools, and resources conducive to the creation of inventions Do we recognize the importance of a proprietary position Have we developed a patent strategy ... 

Technology managers should include the following elements in the plan itself the critical business issues the nature of markets and customers the thmsts of traditional and potential competitors the human resource issues, ie, the skills and abiUties needed to carry out the plan alternatives and contingencies to support the plan a patent and intellectual property strategy and the supporting faciUties and resource plan. The most frequentiy overlooked elements are human resource issues and patent strategies (50). 

Patent strategy is a business plan aided by expert patent opinion/advice. Patenting is the joint endeavour of the inventors and patent attorneys working to a commonly understood objective consistent with the patent strategy. 

The majority of patented pharmaceuticals cannot recoup the cost of product development during the life-span of their patents (Prentis et al., 1988). Thus, patents do not guarantee high profits, but -depending on their quality- patents can significantly improve the chances of commercial success of innovative products. The quality of patents does not only depend on the quality of the research which led to the patented invention, but also on the quality of the patent application and a skilful patent strategy. 

Patenting strategies of dtfeient companies aie aimed to keep out competition ... 

An important feature of the Paris Convention allows applicants to claim priority to their first-filed application in any member country, provided the applicant files a patent application in that country within 1 year. This is referred to as convention priority, and it is of great importance in the patent strategies developed in the pharmaceutical industry, as described below. If the first application meets the conditions of the Convention, the applications in all member countries are treated as if they were filed on the same day as the first application. 

Tractable synthesis Solubility, ADME, toxicity profiling Demonstrated efficacy in cellular and/or pharmacological models Expanded selectivity profiling Clear patent strategy... 

There is a correlation between Research and Development and indnstrialization. Patents provide a stimulus for iuvest-ment in Research and Development. Investment in the type of development which has brought in the world great progress in medicinal chemistry requires a healthy patent strategy. 

Patents provide a stimulus and assure possibility for iuvest-ment in Research and Development. Without iuvestmeut, it is not possible to have an efficient Research and Development Programme. A healthy patent strategy is the key to scientific... 

Knight HJ. Patent Strategy for Researchers and Research Managers. Chichester Wiley, 1996. A description of basic... 

Gibbs A, DeMatteis B. Essentials of Patents. Hoboken, NJ John Wiley Publishers, December 2002. E-book, March 2003. This book presents invention and the U.S. patent system in a real-world context. Practical content includes chapters on Patent Strategy, Patent Tactics, Managing Patents in the Engineering Department, and Managing Patents in Manufacturing and Operations. E-book option ensures greatest currency. Publisher states that all updates will he provided free with purchase of the main volume (in either format). 

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