Strategic Intellectual Property Management

Specialising in UK-based Life Science SMEs planning to profit from US markets

Biotech companies can maximise profits through effective IP management that is aligned with their market(s) and that fits their strategy. The most profitable market, the United States, should get top priority. But competitive advantage will soon be copied by competitors unless protected by the USPTO or maintained as a trade secret.

Each of the 50 states is free to develop their own trade secret laws but most have adopted the Uniform Trade Secrets Act (UTSA) which codifies and harmonises potential remedies for misappropriation of trade secrets including injunctive relief, damages, and attorney's fees.
Most companies protect their trade secrets through non-disclosure and non-compete clauses in employment contracts, but companies unfamiliar with the US laws should understand their limits.
Non-disclosure clauses must not violate the employee's rights under the National Labor Relations Act (NLRA).
Non-compete clauses will be interpreted under the law of the particular state so drafting or enforcing a restrictive covenant is necessarily state-specific. California, for example, severely limits the permitted extent and enforcement of such restrictions.
State laws (not federal law or the USPTO regulations) govern whether an assignment of invention clause is valid.

Patent rights are protected under US federal law and granted by the United States Patent and Trademark Office (USPTO). The America Invents Act (AIA) replaced the "first to invent" with "first inventor to file", removing a major difference between the US and the rest of the world. But the AIA did not harmonise everything and changed some rules leaving many people confused.
The USA still retains the one-year grace period but now only protects disclosures made by or derived from the inventor (not an unrelated third party).
A change in patent validity and infringement proceedings has been misinterpreted to mean that the inventor no longer has to disclose the "best mode" - so might be able to slide by (as in many other countries) with a "good enough mode" while keeping the best part(s) secret. That is wrong. The best mode must (still) be disclosed in your application to the USPTO.
Third parties can now challenge the validity of a granted patent through Post-Grant Review (PGR), inter partes review (IPR) and Covered Business Method (CBM) procedures.

Synapses has years of experience -

  • protecting IP through trade secrets or patents prosecuted through the USPTO
  • providing Freedom to Operate (FtO), by working around US patents and in-licensing the others
  • marketing and selling biotech products and services in the US
  • preparing and refreshing business plans for start ups and SMEs in the UK
  • preparing applications, directing prosecution and managing patents
  • launching biotech start-ups and applying for grants in the UK

Synapses has the knowledge, experience and connections to help you arrive, survive and thrive in the United States.

What is Strategic IP Management?

Who is Synapses?

Email Synapses

(© Dr Jamie Love 2015)