Auditing Your IPDavid Bradin

Friday, February 4

© 2011 Hultquist IP. All rights reserved.

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.

THANK YOU

© 2011 Hultquist IP. All rights reserved.