Without a doubt, intellectual property has become the gold dust of modern commerce. Its possession and protection, the competition for it, and litigation over it, have dominated a range of industry sectors and led to the rise of companies whose sole reason for being is to litigate in the patent arena. Clearly companies in possession of valuable IP need a well-considered strategy for its management and protection.
However, in today’s global business world, enforcing IP rights in multiple jurisdictions can often be a considerable challenge. This includes determining where to file for registered rights. Global IP strategies are now a major component of corporate strategic planning, as is handling appropriate monitoring and management.
What trend do you see having the biggest impact on how U.S. life sciences companies can best protect their IP in the year ahead?
Perhaps the biggest trend affecting pharma and biotech IP is the increasing use of patent challenges before the U.S. Patent Trial and Appeal Board via a newly created procedure, the inter partes review (IPR). IPRs seek to invalidate patents at much less expense than in traditional litigation and under lower standards of proof than required in district court. Responding to them requires expert strategizing by defense counsel to protect innovation and secure a company’s IP.
What is the most important consideration related to IP for companies pursuing cross-border technology transactions?
Cross-border IP transactions require consideration of the differing laws of the various jurisdictions. Agreements to license IP may be subject to competition laws, where certain restrictions or conditions on a licensee may be permissible under one jurisdiction but not another. Certain jurisdictions may provide robust enforcement of IP rights, while others do not. Companies with IP assets must take into consideration these differences when engaging in cross-border transactions.
What is the most important step global companies can take to protect their IP in today’s world of ever-increasing employee mobility?
Companies must put protections in place that prevent employees from taking intellectual property and provide legal recourse if they do. This includes on-boarding and off-boarding protocols, state- of-the-art invention assignment and nondisclosure agreements, comprehensive policies, employee training, and IT systems security. Most importantly, safeguarding IP requires that legal, human resources, and IT personnel work closely together to create a culture of compliance. Lawyers must provide the rules, while IT provides the tools, and HR implements and monitors.
China and the U.S. accounted for 87% of the total growth in filings under the Patent Cooperation Treaty
Source: World Intellectual Property OrganizationOur lawyers won a complete victory for Supernus Pharmaceuticals and Galderma Laboratories in the first-ever successful defense of a pharmaceutical patent in an inter partes review (IPR), a relatively new process for challenging the validity of a patent through a trial before the Patent Office’s Patent Trial and Appeal Board (PTAB) rather than through federal courts. In the IPR proceeding, generic drug company Amneal Pharmaceuticals petitioned the patent office to invalidate three key patents held by Supernus for the blockbuster rosacea drug Oracea, claiming each was unpatentable because they were obvious variations of earlier research. The PTAB determined all three patents were valid, agreeing with our argument that Supernus’ claims were indeed patentable. The decision effectively protects the patents for Oracea against generic incursion through 2027, when the patents expire.
We represented Kolon Industries Inc. in securing a favorable trade secrets decision before the U.S. Court of Appeals for the Fourth Circuit. The court overturned verdicts on liability and damages—entered in 2011 by the U.S. District Court for the Eastern District of Virginia—in connection with DuPont’s trade secrets case against Kolon, thereby also invalidating the worldwide injunction placed on its product Heracron®. By vacating the judgment against Kolon and remanding the case for further proceedings before a new judge, the ruling granted Kolon a new opportunity to tell its side of the story and opened the door to present additional evidence that had been improperly kept from the jury in the prior trial.
We are advising Oculus VR, a subsidiary of Facebook focused on developing immersive yet affordable virtual reality (VR) technology, on the corporate and transactional IP aspects of the upcoming worldwide launch of its groundbreaking VR headset, the Oculus Rift. Our lawyers have represented Oculus in relation to its development, manufacturing, and supply agreements related to the global product launch.