While considering filing for a patent application, it is essential to weigh the risk of filing for products and technologies that are not guaranteed for success. As time moves on and filing becomes more costly, a filefor- everything approach is simply becoming unrealistic. “While lots of patents are good, smart patents are better,” Richard Hake, Chief Patent Counsel of Kythara Biopharmaceuticals.
While considering when to file, looking at the present value and your ability to enforce a patent is key in making this decision. Chief IP Counsels receive plenty of pressure from their colleagues to move quickly and file for any and all patents, but this is not always conducive to filing efficiently, especially when these colleagues are demanding you cut costs. Patent Counsel must now educate their CFOs on the contingency of filing now for things that could be filed later. “Patents only exist in the context of business, they require a business reason to file and good science to be the basis” Richard Hake, Chief Patent Counsel of Kythera Biopharmaceuticals.
While looking at your future global patents, IP Counsel in the Pharmaceuticals and Biotechnology industries must recognize what costs are weighing them down, and what patents are not worth their time. The question of enforceability and a countries ability to monitor counterfeiting should factor in your decision on what markets to enter. While evaluating your current portfolio, abandoning costly or useless patents and reducing maintenance can help cut costs significantly. Chief IP Counsel will need to analyze their patents on a case-by-case basis to successfully maintain a budget in expensive markets.
The most costly aspect for companies with international filings is often times the translation services. Conduct proper research to find a partner on the ground that will meet your needs and keep costs low while maintaining a strong relationship. Know the company that is doing the translation work and build trust with them as it can go a long way in producing better results.
Chief IP Counsel are moving away from a ‘take no risk, file on everything’ stance, to a more realistic approach to evaluating each case critically. “Craft claims to capture subject matter across the value chain to increase business revenue. Think upfront with whom and how you might have to use the patent,” Jaimes Sher, Chief Intellectual Property Counsel of Celanese.