Uncovering Red Flags in IP Ownership and Solving Conundrums Caused by Government Funding Initiatives on IP Rights and Evaluation

November 9, 2020 3:00pm

Patricia A. Carson
Partner
Kirkland & Ellis LLP (New York, NY)

Jennifer K. Gregory
Assistant General Patent Counsel - IP Transactions
Eli Lilly and Company (Indianapolis, IN)

Henry H. Gu
Vice President, Chief IP Counsel
Akebia Therapeutics, Inc. (Cambridge, MA)

Dr. Fangli Chen, Ph.D.
Partner
Vice Chair, Life Sciences Patent Practice

Proskauer Rose LLP

Red Flags:

  • What are the key questions to ask and red flags to look for when seeking to identify the true owner of the IP?
  • Have potential third-party rights been properly assessed?
  • Has there been a valid and inclusive assignment of patents to the licensor?

Government Funding:

  • Has government funding been involved and appropriately disclosed? And if so, what effect will this have?
  • Examining the U.S. v. Gilead case determining government ownership of the HIV prevention drug Truvada for PrEP
  • Assessing whether any COVID-19 related patents have been developed under government funding initiatives and what the impact will be on companies’ rights to them
  • Understanding how to look at the role of government funding when conducting due diligence on a deal: What should you look for in the government contracts? How should you evaluate the work that was done? Etc.