Synapses
Why the United States?
If you do not have the USA in your business plans, you are ignoring the best market and opportunities!
- The US medical device market is the largest in the world, accounting for over half the global total. Espicom market report, 31 August 2008
- The US is the largest market for therapeutic proteins in the world. PRLog.org
- The US biotech industry is expected to touch $131.8 billion by the end of 2010 (growing at the rate of 14% from the year 2005). US Biotech Market Analysis RNCOS, March 2007
In order to effectively take part in the US Life Science market you must have a patent granted by the USPTO or a significant presence in the US. Preferably both.
What can Synapses do to help?
- develop an IP strategy that takes into account the complexity and unique features of US patent system
- conduct searches for prior art (globally, not just US) and provide freedom to operate analysis (for US only)
- use experts to progress your PCT application through the US national stage to patent at a price much less than most UK attorneys offer
- look for and negotiate licensing deals in the USA to leverage your US patent(s)
- undertake business development for you; establish a high-quality US sales force; find excellent manufacturing facilities that you can afford; etc.
- undertake corporate development for you; prepare market research and analysis focused on the US market, help you prepare your business plan(s), seek financing, etc.
- conduct due diligence on potential collaborations, partnerships, etc. with US companies
- and much more.
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A message from Dr Jamie Love of Synapses
If you are merely adding the US as a Designated State and passing your PCT application along to the USPTO (at the National Stage), without understanding the important differences between the US and EP systems, you are risking your IP.
I have done PCT application patent searches on behalf of the USPTO, studied to become a patent agent and managed IP for several small companies in San Francisco. Since returning to the UK and becoming involved in patents on this side of the Atlantic, I have been shocked at the misunderstandings, mistakes and ignorance of many UK professionals regarding US patent laws, requirements and regulations. Your US application could be irreversibly harmed, your patent rendered invalid or lost forever due to a misunderstanding about ...
One Year Grace Period
Provisional Patent Application
Request Not to Publish
Continuation-In-Part
First to Invent
Inventive Step
Best Mode
Inventorship
Inventor's Declaration
Two-part Claims
Reexamination after Grant
Maintenance Fees
(And don't even get me started about infringement litigation!)
Losing your priority date or your chances of protecting your invention in the US is poor IP management. Being awarded a US patent that is easily rendered invalid is a waste of money. An ineffective IP strategy will not please your investors.
I am not a lawyer, so I do not give legal advice. However, I am a biotech business professional with many years of experience. I give business advice.
Services that I offer include ...
- creating an effective IP strategy. This is where my MBA and years of experience in business and corporate development join with my expertise in patents. By the way, I am not just a "US IP guy". I have managed patents granted throughout EPO countries, China, Canada, Japan, etc.
- searching prior art. One of my jobs was to “kill patent applications”. Lawyers hired me to search for prior art, mostly in the USPTO database. I can save you a lot of money by finding prior art before the WIPO or USPTO does. More importantly, you can use my findings to structure your claims to avoid the prior art.
- planning freedom to operate (FTO). Not only can I tell you if US patents stand in your way, I can also tell you if those patents are still in force. (The median US patent term is actually cut short by about five years because applicants decide not to pay the large final fee.) I know how to find patents and determine their status. This kind of information is critical to understanding your FTO and making strategic decisions.
- finding licensing opportunities. Did you spend a lot of money getting and maintaining a US patent but don't use it? I can help you to realize the value of your US patent(s) by helping you to out-license it to US-based companies. Conversely, I can use the information I glean from the FTO checks to help you to in-license US-based IP critical to your plans.
By the way, I cannot "prosecute" your US patent application through the USPTO, but I know many experts in the US who can, and for less money than you might think.
Again, I am not a lawyer, so I do not give legal advice. I give useful, strategic, business advice for the USA market. My job is not to get you a patent (at any cost and of arguable usefulness). My job is to help your business succeed in the USA.