Are Public/Private Collaborations Accelerating Innovation?

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Presented at NutrEvent

Lille, 18

th

_{June 2015}

R. Frederic Henschel

rhenschel@foley.com

Are Public/Private

Collaborations

Accelerating

Innovation?

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Foley & Lardner LLP

Boston

Brussels

Chicago

Detroit

Jacksonville

Los Angeles

Madison

Miami

Milwaukee

New York

Orlando

Sacramento

San Diego

San Diego/Del Mar

San Francisco

Shanghai

Silicon Valley

Tallahassee

Tampa

Full service law firm

–

Intellectual Property

–

Litigation

Over 800 attorneys

> 60 practice areas

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Excellence in Intellectual Property

Foley ranked #2 as among "Kings of IP" in the Who

Represents America’s Biggest Companies survey by

Corporate Counsel

(2012)

Ranked as a National Tier 1 firm in

2013 U.S. News – Best

Lawyers "Best Law Firms"

in Patent Law, IP Litigation,

Trademark Law and Biotechnology Law

One of the few general practice firms in the country to be

recognized among the top 10 for both patent litigation (by

Corporate Counsel

magazine) and patent procurement (by

IP

Today

)

Ranked #9 in total number of patent applications

(

IP Today

2013)

Top patent litigation firms by

Corporate Counsel

–

Ranked No. 10 in total district court cases (2012)

–

Ranked No. 10 in defense cases (2012)

Ranked No. 14 on IP Today’s 2011 “Top Trademark Firms”

list, and ranked among the top trademark firms for seven

years (2003 – 2005, 2007, 2009 – 2011)

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IP Department

Nearly 200 attorneys and 15 patent

agents/law clerks

Practice areas:

–

Chemical, Biotechnology & Pharmaceutical

–

Electronics

–

Green Energy Technologies

–

Information Technology & Outsourcing

–

IP Litigation

–

Mechanical & Electromechanical Technologies

–

Trademark, Copyright & Advertising

–

Medical Devices

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Foley’s Technology Breadth

40+ PhD’s

40+ Masters

Biotech/Bio-Pharmaceutical/

Regenerative Medicine

Electronics / Mechanical

Chemical/

Pharmaceutical/

Nanotech/Cleantech

New Media/Internet/

Software/Other Content

Technologies

Stem cell Personalized medicine Synthetic biology Molecular biology Endocrinology Genetic engineering Agricultural biotechnology Industrial biotechnology BioFuel Immunology Biochemistry Vaccines Protein chemistry Chemical engineering Specialty chemicals Pharmaceutical chemistry &

delivery systems Physical & natural products

chemistry

Organic/inorganic chemistry Agricultural chemistry &

engineering process Photographic material &

processing Photovoltaic

Business methods Financial services applications

Healthcare IT Computer programming, including business software

Communications systems design – wired & wireless

Smart grid e-commerce

Online data privacy & security Medical devices

Material sciences Semiconductor fabrication Semiconductor circuit design Memory & logic system analysis Microprocessor system evaluation Electrolytic apparatus & processes Optical and fiber-optic system design

Solid state gas censors Energy storage

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What do we do?

Patent office proceedings

Licensing

Litigation

Opinions (e.g.,

freedom-to-operate)

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Pitfalls for patenting in the US

Disconnect between inventors and patent

attorneys

Publication issues

–

Academics seek early publication

–

Patents require novelty; weak grace periods

Ownership and inventorship

–

Co-owners share an undivided interest

–

No accountability to other co-owners

–

Initial ownership goes to inventors

–

Cross-border deals must consider effect of local

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Structuring the relationship

Collaboration/Licensing Agreements

–

Exclusive or non-exclusive license?

–

Is the license an effective assignment/sale?

Patent owner may want to limit scope of

licensed technology (“field of use”)

Who owns new discoveries made during

the collaboration

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Managing costs

Learn about patents

–

Take a basic patent course

–

Get more involved in the patenting process

US provisional application

–

Very low fee, minimal filing requirements, no

publication if unused

Law firm risk sharing (Foley Accelerator)

Consider university patenting policies and

inventor incentives

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Foley Startup Accelerator

■

Risk sharing by waived and deferred

payment of legal fees

−

Startup Services

−

Value Creation Services

−

Friends and Family Financing

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•Payable: Third party disbursements (filing fees, agent fees)

Startup Services

First Venture

Financing

(or equivalent)

Friends & Family

Financing

Value Creation

Services

Fees waived

Fees deferred

50% of fees deferred

Fees deferred

All deferred fees paid

out of Phase 4

financing proceeds

Phase I

Phase 2

Phase 3

Phase 4

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US Patenting Incentives

USPTO discounts

–

Small entity (50% of normal fees)

–

Micro entity (25% of normal fees)

Provisional application filing fee for a micro entity

is $65

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US Patenting Incentives

Periodic fees start after grant of patent

and increase over time

–

Small/micro entity discounts apply

–

Cost burden is shifted to those who benefit from

using patents

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Patenting incentives in Europe?

No discounts at European Patent Office

(EPO)

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Number of patents to cover all United States?

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Number of patents to cover all of Europe?

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Pan-European Patent & Court?

Expected in 2017

“Unitary Patent”

–

One patent covering ratifying countries

–

Examination by EPO (little change)

“Unified Patent Court”

–

Main division in Paris

–

Regional/technical divisions in Munich and

London

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