Things are not always what they seem
Patent claims are where it’s at if you are looking at freedom to operate. Keep in mind, however, that it’s really issued claims that are the worry. I get a fair bit of concerns sent my way about patent applications. It comes in two flavors. Some concerns are for what is in the specification, and others are for the claims published with the application. I’ll take these on one at a time. With regard to what is in the body of the application (the specification), if the subject matter of interest hasn’t made it into the claims, this is at best a worry for the future. Because the relevant elements are not in the claims, this is not what the applicants are currently pursuing for patent coverage. There is a possibility that this subject matter could provide the basis for claims in a future application (e.g., a continuation or divisional [...]
Got government grants? The ticking clock to file patents just got faster!
The regulations governing obligations related to patent filings changed in 2018. But now, almost a year later, I find that very few grant recipients are aware of the recently added obligations or even more generally, of the ones that remain the same. In a nutshell- if you get government money for research and that is used to make a patentable invention, there are strings attached. Welcome to the Bayh-Dole Act. If you are getting NSF, NIH and SBIR funds (or other government funding) as a small business (e.g., start-up company) or non-profit institution (e.g., university), you should understand your commitments. Why? Because if you don’t, you could lose valuable rights to your inventions. If you work for a university, most likely the folks handling the patent filings there are aware of the requirements. But for those of you with a start-up managing your own IP filings, this may come as [...]
Choice: It’s yours to make
Appreciate choice – that is what my mediation app advised. At the time, I gave it only a passing thought. Yes, it is nice to have choices and not be stuck down a single path. However, do we really appreciate choice? Do we consciously make choices and in a “smart” way? I find my day filled with choices, particularly on how to allocate my time. I have lists of projects to start, those that need completion, administrative tasks and emails to send. I have reach-outs on LinkedIn, catching up on biotech news and that’s just the job stuff. There are plenty of tugs from the personal life realm too. What I have been mulling over is whether I am consciously making choices or just following certain paths as if guided by an invisible current. For instance, it’s simpler to respond to the emails that appear at the top of the [...]
Urban Legends
When I was growing up there was a rumor that went around school: a fast food restaurant had somehow deep fried a rat instead of a chicken piece and served it to a customer. I have my doubts on the veracity of that one, but it sure spread around. A similar thing seems to have occurred in the patent world. Sitting with a group the other day reviewing start-up pitches, someone remarked that the founder could just get patent protection by filing the slide deck as a provisional application. That is another urban legend. It is true you can file a slide deck with the US patent and trademark office (PTO), along with the required coversheet. No one is going to stop you (although if you read on you might see that someone should stop you). You can practically file a ham sandwich with the PTO as a provisional patent [...]
Different Paths
So many biotech start-ups, and so many different ways to navigate from point A to point B. I attended two talks recently which provided a contrast in styles for designing and getting a startup off the ground. Both paths were successful, but success came in different forms. The first presentation was Jennifer Doudna, well-known for her CRISPR work at UC Berkeley. Caribou Biosciences grew out of this lab work and became a company in late 2014. Interestingly, Dr. Doudna placed her graduate student Rachel Haurwitz at the helm. Caribous utilized SBIR grants and the QB3 program when it began life as a startup. Closely following these inputs, Caribou engaged in multiple corporate partnerships, such as with Novartis and Dupont, as additional sources of revenue. Caribou remains a private company. An interesting off-shoot of Caribou is Intellia Therapeutics. Intellia takes on the therapeutic angles of the CRISPR technology, whereas Caribou was founded [...]
I wish I had a role model like that
Sitting in a room several weeks ago, I found myself looking at an unusual sight. In front of me was a panel of 6 women, all very accomplished experienced professionals in the biotech arena – CEOs, board members and investors. Why was this unusual? Because for the most part, my experience has been that many panels of speakers are all men or at best 1 woman in a panel of 4-5 men. The women in front of me were also generally my age or just a tad older. The women attendees for the event were generally younger by 10-20 years. And I got to thinking . . . as my younger self, when I was just starting along my career in science and biotech, I wish I’d had role models like the women on the panel. Now don’t get me wrong. Men can be great role models. But at some [...]
No attorney-client relationship is created between INGENSITY™ IP and visitors to INGENSITY™ IP’s website. The content of this website is for informational purposes only and does not offer legal advice. Circumstances are fact-specific and you should consult an attorney for legal advice concerning your individual issues.