The Best and Newest Strategies for Ownership and Inventorship Analyses

November 28, 2023 4:15pm

Lisa Hillman, Ph.D.
Partner
Lathrop GPM

Lindsey Wanner
Associate General Counsel, IP Alliance and Due Diligence
Gilead Sciences Inc.

Nicole Grimm
Legal Director, IP
Alnylam Pharmaceuticals

Daniel Margolis
Partner
Allen & Overy LLP

Topics of discussion include:

  • Ensuring that the inventors have been properly listed on the patent application or issued patent:
    • In the event of errors in non-provisional applications, asking whether an ADS or a continuation application is the better solution
    • In the event of errors in issued patents, analyzing the best approach for filing a petition to correct inventorship
    • Reviewing which errors cannot be corrected, and if reissue or reexamination is not available or desirable, how to quantify this risk in the deal
  • Appreciating foreign filing:
    • Considering whether the applicant of the PTC is the right owner, whether they have the right to claim priority, and any resulting prior art issues
  • Verifying whether the patent been maintained in good force
    • If the patent is not maintained in good force, what are the revival options?
  • Determining ownership: have there been valid and inclusive assignments?
    • Going beyond the licensor and looking to consultants, CROs, or other third parties for proper assignment
    • Patent ownership when R&D staff departs
  • Considering ownership and inventorship for products developed with the assistance of federal funding