Will the Real Inventors Please Stand Up: Ensuring Proper Inventorship in an IP Due Diligence Analysis

November 29, 2018 9:45am

Catherine Eckenswiller
Legal Counsel – Intellectual Property & Agreements
VBI Vaccines Inc. (Ottawa, CA)

Kimya Harris, Ph.D.
Vice President, Head of Intellectual Property and Legal Affairs
KSQ Therapeutics (Cambridge, MA)

Ryan Murphey
Counsel
Ropes & Gray LLP (New York, NY)

  • Identifying necessary steps in ensuring accurate and timely-recorded assignments
  • Locating, reviewing, and preserving all employment agreements, collaboration agreements, licensing agreements, grant contracts, and other agreements potentially affecting ownership rights
  • Analyzing potential obviousness type double patenting challenges
  • Understanding the role of Bayh Dole and Government-funded projects relative to the concept of inventorship
    • Determining whether a project is “Government funded”
    • Exploring Government funding in early-stage research vs. late-stage
    • Understanding Marchin rights as to access and pricing