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Patents & Competitive Intelligence James L. Grant GLIST – Global Legal Information Science Team Pfizer Corporate Legal Patent Department La Jolla, CA,

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Presentation on theme: "Patents & Competitive Intelligence James L. Grant GLIST – Global Legal Information Science Team Pfizer Corporate Legal Patent Department La Jolla, CA,"— Presentation transcript:

1 Patents & Competitive Intelligence James L. Grant GLIST – Global Legal Information Science Team Pfizer Corporate Legal Patent Department La Jolla, CA, 92037

2 Patents & Competitive Intelligence - Overview Introduction Value of Patents Global Nature of Patent Filings Patents as Unique Scientific and Legal Documents Patent CI cf Business CI Discussions With Clients Case Study –High Throughput Screening

3 Patents & Competitive Intelligence Making a Difference, …One Patient At a Time

4 Patents & Competitive Intelligence - Value It is estimated that upwards of $800 Million is required to bring a drug from idea, to the lab, through patent prosecution, drug approval, and launch. It is therefore intrinsic to the process to have the best information possible to drive the work forward at all stages along the drug pipeline or for any product life cycle. Showing value from research to revenue.

5 Patents & Competitive Intelligence - Value Triumphs and Trials in Tech Transfer As tech transfer offices sprouted, they became increasingly valuable to their home universities. In some cases, the benefit to the university was completely financial, such as the gene insertion patents that have made more than $300 million for Columbia University. That money can be funneled back into research, or into startup packages to lure prestigious recruits to the institution. At Wisconsin, we have this billion-dollar endowment that has been generated entirely out of patents, says Handelsman. The quality of life in science at UW is a lot better than at a lot of universities [because of that]. A number of her students, for instance, have been supported by fellowships offered through Wisconsins tech transfer arm. From Stigma to Street Cred: Tech Transfer Is Gaining Ground Genome Technology, March 2007, by Meredith Salisbury

6 Patents & Competitive Intelligence - Value Everything should be patented. On the other side of the coin are scientists who believe that all new findings should be patented, and argue that their tech transfer offices arent doing good work by not pursuing patents on everything. In fact, says Soderstrom at Yale, filing a patent is an expensive proposition and unless theres a clear indication that the university will recoup its legal expenses, the tech transfer office wont pursue the patent. In the US alone, he says, filing the patent and prosecuting it -- assuming that its fairly straightforward -- is somewhere between $25,000 and $50,000, he says. If you decide to go international with [the patent], start adding zeroes. From Stigma to Street Cred: Tech Transfer Is Gaining Ground Genome Technology, March 2007, by Meredith Salisbury

7 Patents Granted by Office The largest number of patents granted is at the United States Patent Office, followed by Japan, the EPO, China and the Republic of Korea. These five offices account for 74% of patents granted worldwide in 2004. There are significant differences in the proportions of patents granted to residents and non-residents in different offices

8 Patents & Competitive Intelligence International Technology

9 Patents & Competitive Intelligence – Unique Sources The European Commission recently calculated that 20bn pounds a year is wasted in duplicate research. If a designer wishes to check whether an idea is really new, he or she should begin with a search of existing and publicly available patent information – 80% of the technical information contained in patents is not to be found anywhere else. Packaging Week, Jan. 23, 1997, p. 17

10 Patents & Competitive Intelligence Thus in today's global competitive world there companies have to be more alert to win the war, through competitive intelligence using patent information. Competitive intelligence (CI) is the process of monitoring the competitive environment. CI enables senior managers in companies of all sizes to make informed decisions about everything from marketing, R&D, and investing tactics to long- term business strategies. Effective CI is a continuous process involving the legal and ethical collection of information, analysis that doesn't avoid unwelcome conclusions, and controlled dissemination of actionable intelligence to decision makers. The War of Patents Information and Competitive Intelligence Monday, December 18, 2006 by: Vinod Kumar SinghVinod Kumar Singh

11 Patents & Competitive Intelligence Other uses for Patent Analysis and Mapping include: Identifying emerging technologies and trends, including an analysis of the rate of development of a technology Revealing gaps in a technology which could be new development opportunities Observing when a competitor abandons a technology Assessing the risk of infringement (working with patent attorneys, this line added) Monitoring competitors activities, including new players entering a market Detecting possible partnering opportunities The War of Patents Information and Competitive Intelligence Monday, December 18, 2006 by: Vinod Kumar SinghVinod Kumar Singh

12 Patents & Competitive Intelligence Traditional Business Intelligence (Thomson): Basic COMPANY INFORMATION, such as address, telephone number, and company officials, and key financial data like 10-K reports. Company and industry news, including introduction of new products, sales, increases in research and development spending. Analyst reports on companies, an industry, or a specific country. Detailed market research on specific industries or companies. Product information, such as new product launches. Information on mergers, acquisitions, alliances, and partnerships.

13 Patents & Competitive Intelligence Intellectual Property Trademarks Copyrights Patents Trade Secrets

14 Patents & Competitive Intelligence What is a patent? An official government document that grants to the assignee (owner of the patent) a right to exclusivity in making, using, selling and offering for sale the invention for up to 20 years from the date of filing with the USPTO. When there is more than one assignee, each has a non- exclusive right to the invention. Patents may be licensed by the assignee to another party. To provide a clear definition of what is covered in a patent, SPECIFICATION and CLAIMS are included in all patents.

15 Patents & Competitive Intelligence What makes a patent unique? USEFUL: Is the invention useful? (35 U.S.C. §101 - Utility) Does the invention fit into one of the proper categories? (i.e. a composition of matter or process) Will the invention work for its intended purpose? NEW: Is the invention new? (35 U.S.C. §102 – Anticipation, prior art) Has the invention been disclosed in its entirety by another party prior to the date of invention?

16 Patents & Competitive Intelligence – FTO/FTP Freedom To Operate/Practice Invention Review Committees – IP Portfolio Review Trade Secrets Defensive Publications – Intentional Publication – Public Domain Journals, Conferences, Technical Bulletins, IP.com, etc. Ongoing Patent Prosecution Within IP Space New Uses Improvements Licensing Exclusive Non-exclusive

17 Patents & Competitive Intelligence – Strategic Decisions Require an IP Component IP Strategy Opportunities Partners Products Patent Data/Patent Analysis High Level Relevant Business/Legal Decision Financial Acquisition / Licensing Targets Players and Trends

18 Patents & Competitive Intelligence – Fundamental Steps – Getting Started Meeting With Clients Key questions answered Identification of key business goals Subjects to address Create a picture or story book of the process Create by-in and agreement Search in various categories Analysis High-level work product

19 Patents & Competitive Intelligence – Case Study – High Throughput Screening (HTS)- Robotics HTS

20 Patents & Competitive Intelligence – Case Study – Search In Various Technologies HTS Artificial Intelligence Circuitry Power Design Communication Uses Partners CI

21 Patents & Competitive Intelligence – Case Study – Building A Report HTS Individual Reports Address Pertinent Technology Identify Partner/Competitors Identify White Space Unexplored technology areas Future IP

22 Patents & Competitive Intelligence – Case Study – Communicating Report(s) To Business Managers / Attorneys HTS Artificial Intelligence Circuitry Power Design, etc.

23 Patents & Competitive Intelligence – Case Study – Key Concepts In Title, Abstract, and Claims [(highthroughput or highthrough()put or high()through()put or high()throughput)()(screen? or analys?)/ti,ab,cm] HTS DIALOG(R)File 349:(c) 2007 WIPO/Thomson. All rts. reserv. 01507871 GPCR EXPRESSING CELL LINES AND ANTIBODIES Claim... of said recombinant cell. 42. The method of claim 38 wherein said method employs a high throughput screen for detecting interaction of said test entity with said fragment.

24 Patents & Competitive Intelligence – Case Study – Search of Inventors HTS ? HTS Inventors Adding title to results... HTS INVENTORS ------------- RANK: S1/1-1037 Field: AU= File(s): 652,349 (Rank fields found in 1037 records -- 2793 unique terms) RANK No. Items Term -------- ----- ---- 1 16 BOUGUELERET LYDIE 2 15 MAHE EVE 3 14 CUSIN ISABELLE 4 14 NIKNEJAD ANNE 5 14 REFFAS SAMIA 6 11 EHRHARDT THOMAS 7 11 FREUND ANNETTE 8 11 RUBEN STEVEN M 9 10 ROSEN CRAIG A 10 10 SONNEWALD UWE

25 Patents & Competitive Intelligence – Case Study – Search of Assignees HTS HTS ASSIGNEES ------------- RANK: S1/1-1037 Field: PA= File(s): 652,349 (Rank fields found in 1037 records -- 2940 unique terms) RANK No. Items Term -------- ----- ---- 1 24 BASF AKTIENGESELLSCHAFT 2 24 THE REGENTS OF THE UNIVERSITY OF CALIFORNIA 3 20 MERCK & CO INC 4 16 BOUGUELERET LYDIE 5 15 GENEPROT INC 6 15 MAHE EVE 7 14 CUSIN ISABELLE 8 14 NIKNEJAD ANNE 9 14 REFFAS SAMIA 10 12 HUMAN GENOME SCIENCES INC

26 Patents & Competitive Intelligence – Case Study – Search In International Classes – Technology Descriptors HTS HTS IC ---------- RANK: S1/1-1037 Field: IC= File(s): 652,349 (Rank fields found in 1036 records -- 1030 unique terms) RANK No. Items Term -------- ----- ---- 1 199 C12Q-001/68 2 98 G01N-033/68 3 97 G01N-033/50 4 96 G01N-033/53 5 53 C12N-015/12 6 50 C12N-005/10 7 47 C12Q-001/00 8 42 B01J-019/00 9 42 G01N-033/543 10 41 C12N-015/63

27 Patents & Competitive Intelligence – Case Study – Technology Sectors of Interest HTS DIALOG(R)File 351:Derwent WPI (c) 2007 The Thomson Corporation. All rts. reserv. Predicting likelihood of cells associated with pathophysiological condition acquiring resistance to therapeutic agent, by inputting values into model of growth response of cells with agent in computer, obtaining output values Original Titles: HIGH THROUGHPUT SCREENING FOR ANTIMICROBIAL DOSING REGIMENS... DIALOG(R)File 351:Derwent WPI (c) 2007 The Thomson Corporation. All rts. reserv. Improved detection of mutation in a target sequence comprises determining the nucleotide sequence of the amplified products or fragments using high throughput sequencing Original Titles: HIGH THROUGHPUT SCREENING OF MUTAGENIZED POPULATIONS... DIALOG(R)File 351:Derwent WPI (c) 2007 The Thomson Corporation. All rts. reserv. 0016538313 WPI ACC NO: 2007-254540/200725 Assessing platelet activation comprises stimulating platelets to cause activation of the platelets, capturing activated platelets in preference to resting platelets, and detecting the captured activated platelets Original Titles: METHOD FOR HIGH - THROUGHPUT SCREENING

28 Patents & Competitive Intelligence – Case Study – Figures and Drawings HTS WPIX COPYRIGHT 2007 THE THOMSON CORP on STN TI High throughput screening device for combinatorial chemistry, has switching system causing selected membrane electrode assembly to be switched on into current producing state in flow channel during operation of screening device PI US 20060024551 A1 20060202 (200613)* EN 16[9] PA (NUVA-N) NUVANT SYSTEMS INC

29 Patents & Competitive Intelligence – Case Study – Figures and Drawings HTS WPIX COPYRIGHT 2007 THE THOMSON CORP on STN TI High throughput screening device for combinatorial chemistry, has switching system causing selected membrane electrode assembly to be switched on into current producing state in flow channel during operation of screening device PI US 20060024551 A1 20060202 (200613)* EN 16[9] PA (NUVA-N) NUVANT SYSTEMS INC

30 Patents & Competitive Intelligence – Case Study – The Story Book HTS Tell a story from beginning to end, from question to series of answers Document thoughts and discussions Each report should show strength of position Relevant patents from w/in the company and outside the company Identify licensing opportunities

31 Patents & Competitive Intelligence – All Technologies

32 Patents & Competitive Intelligence – Key References Patents, Citations, and Innovations: A Window on the Knowledge Economy This book demonstrates the usefulness of patents and citations data as a window on the process of technological change and as a powerful tool for research on the economics of innovation. by Adam B. Jaffe, Manuel Trajtenberg, and Paul M. Romer (2005) Creating and Managing a Patent Information Group in a Global Environment Pages 136-139 by Donna Kaye Wilson


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