IP experts discuss changing times, best practices

It's been a busy week at BIO's IP Conference – here's what we've learned so far. (735 words, 3 minutes, 40 seconds)

BIO IP Conference: Patent experts discuss changing times

Leading experts in intellectual property and biotech sought to understand the current challenges and map a way forward as the BIO IP Conference completed its second day in California yesterday.

What we’re watching today: AI and IP will be taken up, as well as a discussion of how to talk to policymakers about IP. Watch Bio.News for additional updates and coverage.

Why it matters: “There has been a lot of talk about different approaches under the new administration, including some improvements. It's great to have an event where we can prepare and be informed about these developments," said Dr. Hans Sauer, BIO’s Deputy General Counsel and VP for Intellectual Property. 

Improving IP’s reputation: Patents get a bad rap, but academics and industry experts know IP rights actually drive innovation, said law professors Emily Michiko Morris, of University of Akron School of Law, and Jonathan Barnett, of USC Gould School of Law, in a fireside chat.

Working with academic researchers can help in efforts to educate legislators, future lawyers, and even the general public about the importance of IP rights. "I do have some optimism that over time, if you have sufficient accumulated knowledge pointing in one direction, hopefully the world will rebalance,” said Barnett.

BIO’s view: "In some ways the BIO IP Conference feels as if it hasn't changed since I first started attending 20 years ago," said Sauer. "It’s still an essential forum to discuss what's new in the industry and at the USPTO.”

IP Conference panel challenges audience to parse joint inventorship

After laying out how U.S. patent law deals with questions of joint inventorship, experts at the BIO IP Conference recommended how companies and researchers should address the issue.

Patent-law puzzlers: Using fictionalized case studies, a Nov. 18 panel let the audience guess how they would rule, before sharing their own opinions backed by decisions in real cases. For example:

• A researcher writes several hypotheses about RNA and discusses them with a second researcher. Can the second researcher use these hypotheses and gain a patent that excludes the first researcher?
• After early collaboration with a researcher, a big pharma company tests the researcher’s findings and develops a treatment. Should the researcher join the patent?
• If a researcher asks a colleague to create an AI model that speeds drug development, what are the implications?

Watch IP Conference coverage on Bio.News for the answers to these and other cases.

Panelists shared a few best practices…

• Maintain a good paper trail, starting with an inventorship memoranda.
• Have patent conversations early, before you have to address a room full of people who feel they’re being cheated.
• Remember inventors tend to get deposed if there is any legal dispute.
• File a provisional agreement prior to confidential disclosures. 

The bottom line: “There is no excuse not to have a collaboration agreement for every collaboration you do,” said panelist David Pauling, Chief Administrative Officer and General Counsel at Sutro Biopharma, Inc.