1. The Business of Technology Baker & McKenzie LLP Tamsen Valoir, Ph.D. Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a “partner” means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an “office” means an office of any such law firm. The Business of Technology: 10 Tips for Navigating from the Laboratory to the Market Place

2. The Business of Technology 1. Contracts: Must be Signed BEFORE Beginning Employment contracts Confidentiality agreements Ownership of IP Ownership of company

3. The Business of Technology 1. Contracts: Be extra careful with collaborators and contractors Default rule is the employer owns an employees inventions Contracts first!

4. The Business of Technology 2. Cultivate a Culture of Invention* Monthly patent meetings Awards Agreement on inventorship Review pre-publication drafts for invention *Tech Transfer Office

5. The Business of Technology 3. Inventorship Inventorship = Conception and (sometimes) reduction to practice Inventorship ≠ authorship or leadership Intentionally falsifying inventorship can lead to patent unenforceability!

6. The Business of Technology 3. Inventorship Review inventorship in patent meeting Identify which portions of each claim invented by each and provide proof!

7. The Business of Technology 4. Lab Notebooks In any dispute over first to invent the lab notebook will be critical Hardbound lab book with numbered pages Include ideas, description of experiments and data in INK Witness and signed each week Line through unused portions of page

8. The Business of Technology 5. Patent Strategy: Keeping costs low Providing excellent disclosure Copies of best prior art Explain differences between invention and prior art Keep failed experiments!

9. The Business of Technology 5. Patent Strategy: Variety of Coverage Devices, manufacture, use Foreign Protection US v. PCT v. EP Filings

10. The Business of Technology 5. Patent Strategy: Manage Patent Term Start with Provisional (1 free yr) Follow-up on filings Second generation products, new uses

11. The Business of Technology 6. FDA Strategy: 510K v. PMA v. NDA v. BLA Limit claims Orphan status Choose the right indication

12. The Business of Technology 7. Loosen the reins: Effective communication & business saavy from the helm is critical Business/Salesman v. scientist Hire a CEO? Listen!

13. The Business of Technology 8. Stirring Public Interest: Publish* often in different venues Post your own papers Public speaking Develop compelling elevator pitch * Most countries will not allow patent AFTER publication. Clear publications for inventions FIRST!

14. The Business of Technology 9. Financing the Company: Good business plan Apply for every available grant/award/prize Grant writer? Understand different finance strategies Avoid too many early encumbrances Tradeoff between $ and control Know your financiers

15. The Business of Technology 10. Preparing for Due Diligence: Start preparing now for due diligence PDF files well organized and labeled Copies in another city

16. The Business of Technology 10. Due Diligence Files: 1.Organizational6.Licenses 2.Financial7.Contracts 3.Employment8.Publicity 4.Confidentiality Agreements9.FDA 5.Intellectual Property10.Other

17. The Business of Technology Good Luck! Questions?