Evaluating projects for both Companies and Investors.
Giving support in setting up Patent Filing Strategies and Medicinal Chemistry Strategies.
There is a tremendous Unmet Need for Patent Strategy Advice in drug research.
There are two future scenarios when filing a patent application:
• using the patent as “wall paper” – waste of money, of course
• commercialization of a product covered by the patent
Plans for commercialization should be in place before filing.
A Patent Filing Strategy may include scope and time of filing, selection filings, refilings or Life Cycle Management filings like new uses, combinations, salts and polymorphs and formulations.
When in-licensing projects from Biotech companies, the major problem is the IP situation. The compound patent is too old. The Biotech company have filed too early, too broad and they have created prior art for themselves, and thereby made it difficult for patenting of follow-up compounds.
We believe this is a common situation for small and medium size companies, where we could be very helpful in identifying a patentable follow-up.
An innovative strategic concept for small companies:
A small company might utilize what a Big Pharma has already thoroughly researched and patented without being successful to get to the market. A deep analysis may end up with the identification of new interesting compounds, which are, on purpose, structurally close to the known compounds, and on a first glance it may look impossible to get a patent. However, we could be very helpful here in identification of those patentable compounds.
We would, from a very quick preliminary analysis, assist interactively with the company in identifying possibly patentable compounds, either inside or outside the existing often vey broad scope. For this we are using our long medicinal chemistry experience. After selection of the compound we would scrutinize prior art documents to assess what is the “closest prior art” compound and which actions may become necessary to get a valid patent. To be successful with this strategy it is necessary to have long experience from both patent prosecution and litigation.
Other factors to be considered
Aiming for single compound claim for the CD,
- maybe easier to get approval
- definitely easier to defend validity in litigation
At the same time, in order to make it more difficult for competitors, we believe it is important not to reveal the chemical structure of the CD to the public.
However, it could be difficult to achieve both things, but we can provide help…
Late filing is preferred to achieve long patent life.
However, investors most often require that a patent application is already filed:
- We can help companies to argue and defend their strategies in front of the investors, for instance, “Why not having filed yet?”
- It is absolutely necessary to monitor all competitor activities. We can assist in doing this.