To improve their attractiveness to prospective partners, biopharmaceutical companies need to build their patent portfolios
and increase the value of their patents. Likewise, biopharmaceutical companies need to be aware of competitor products with
a particular eye as to whether their competitors are attempting to design around existing patents. Lawyers and patent agents
should be actively involved in this planning process, as they will play key roles in acquiring patent protection, protecting
intellectual property of the company, and licensing intellectual property where needed in pursuit of the company's visions.
Scientists should also be aware of the role of intellectual property, including the importance of maintaining confidentiality,
the need to document the invention process, and the potential confidentiality risks of giving papers on their research.
Conclusion
The preceding discussion provides only a general overview of some of the key intellectual property issues facing biopharmaceuticals.
The following articles in this primer will provide a more detailed understanding of current events in intellectual property.
References
1. City of Hope National Medical Center v Genentech, Inc, 123 Cal App 4th 306 (2004).
2. Garner BA, ed. Black's Law Dictionary. 7th ed. St Paul, MN: West Publishing Company; 1999:813.
3. US Const Art I, §8.
4. 35 USC §100, et seq.
5. 17 USC §101, et seq.
6. 15 USC §1051, et seq.
7. Uniform Trade Secrets Act, §1 et seq.
8. Pharmaceutical Research and Manufacturers of America. Pharmaceutical Industry Profile 2005. Washington DC: PhRMA; March
2005.
9. Hearings Before the Senate Judiciary Committee, 108th Cong, 1st Sess (2004) ("The Law of Biologic Medicine," testimony
of William B. Shultz on behalf of the Generic Pharmaceutical Association, June 23, 2004). (available at http://judiciary.senate.gov/testimony.cfm?id=1239&wit_id=3627.
10. Crawford LM. Remarks at: Annual Meeting of the Generic Pharmaceutical Association; 2005 February 26; Boca Raton, FL.
(available at http://
http://www.fda.gov/oc/speeches/2005/GphA0301.html).
11. Integra Life Sciences I, Ltd v Merck KgaA, 331 F3d 860 (Fed Cir 2003), cert. granted 125 S Ct 823 (2005).
12. Pfizer launches campaign against sellers of illegal generic and counterfeit Viagra and senders of Viagra-related spam
[press release]. New York: Pfizer, Inc; 2004 August 3, (available at http://
http://www.pfizer.com/are/news_releases/2004pr/mn_2004_0803.html/).
13. Nichols v. SmithKline Beecham Corp., 2005 U.S. Dist. LEXIS 7061 (ED Pa 2005).
14. Burton TM. Behind the J&J, Guidant talks: heart implants. Wall Street Journal. 2004 Dec. 8:B1.
Frederick Brown, J.D., is a partner at Gibson, Dunn & Crutcher LLP, One Montgomery Street, Suite 3100, San Francisco, CA 94104, 415.393.8204,
fax 415.986.5309, fbrown@gibsondunn.com
June Tai, J.D., is an associate at Gibson, Dunn & Crutcher LLP, One Montgomery Street, Suite 3100, San Francisco, CA 94104, 415.393.8243,
fax 415.986.5309,jtai@gibsondunn.com
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