Princeton, New Jersey

Department Page

Intellectual Property

Patents - Exclusivity - Trademarks

Department Chair

Name
[Law Firm / Company / University] 
[Title]

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[Relevant professional association memberships]

[Link to Law Firm / Company / University] 
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Advisors

Name
[Law Firm / Company / University]

[Title]

[Link to Law Firm / Company / University]

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[Law Firm / Company / University]

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Introduction to the Department

Core Courses

1. Term of Patents

1.  Term of Patents

  • Base Term
  • Patent Term Adjustment
  • Patent Term Extension
  • Pediatric Exclusivity

Visualize a timeline for patents as part of the development and life cycle management of a drug franchise.

Instructor:  
Matthew Holley
Pharmaceutical Officers Academy

2.  Regulatory Exclusivities

  • New Chemical Entity
  • New Clinical Investigation
  • Orphan
  • New Antibiotic



Patents are half the picture.  Know each exclusivity and what it takes to qualify.  

Instructor:  
Matthew Holley
Pharmaceutical Officers Academy

3.  Non-Patent IP

  • Trademarks
  • Trade Secrets
  • Copyrights 






Maintaining confidentiality is critical, Learn the pitfalls of trade secret protection.




Instructor:
Matthew Holley
Pharmaceutical Officers Academy


4.  Patent Basics

  • 101-What can be patented
  • 102 Novelity
  • 103-Obviousness
  • 112-Enablement and Written Description


These issues are each introduced as concepts and tied to pharmaceutical patents.

Instructor:
Matthew Holley
Pharmaceutical Officers Academy

5.  Patent Prosecution

  • Process of getting a patent
  • Divisionals 
  • Continuations
  • Examiner relations



Knowing the basic process is critical to useful participation.  


Instructor:  
Matthew Holley
Pharmaceutical Officer Academy

6.  Generic Entry

  • Baseline process
  • Timelines
  • Setting expectations
  • Cost of cases
  • Joint defenses


Welcome to the dance!  Know what you would know if you had been through several such cases
.

Instructor:
Rami Bardenstein
Bardenstein Legal

Expert Courses

7.  Small Molecule Patents

Course in development

  • Landscape of chemical systhesis
  • Variations in salts, phosphates, etc.
  • Successes and failures

Instructor:
[Title and Employer]

8.  Biologic Patents

Course in development

  • Evolution and Status of Patentability
  • Protein scopes of exclusion.
  • Claim writing for RNA, DNA and antisense

Instructor:
[Title and Employer]

9.  Digital Health IP
      Strategies

Course in development

  • Sytem entirety protection
  • Software patents and copyrights
  • Data capture and leverage

Instructor:
[Title and Employer]

10.  Artificial Intelligence
        in Patents

Course in development

  •     Inventorship by AI
  • Current strategies of development
  • Information control - Not feeding the beast 

Instructor:
[Title and Employer]

11.  Licensing
       and Transactions

Course in development

  •    Effective Due diligence
  • Matching terms to strategy
  • Team dynamics and expectations

Instructor:
[Title and Employer]

12.  Life Cycle Extension

Course in development

  • Innovation examples and vectors
  • Visualize and Time investment
  •    Rx to OTC

Instructor:
[Title and Employer]

When your learning fades, refresh it by reviewing a course.
Access is forever on Academy courses you take.

Tools for Your Use

Patent Timeline and Presentation

Having a clear understanding of the life cycle of your company's current products, those in development, and those being looked at by Business Development is critical.  Use the template not only for your understanding, but also to communicate about the products.

Use this template if you would like to teach all or part of the Patent Term course in your own organization. 

Invention Disclosure
Form & Questionnaire

Your company or institution should have an established process for capturing ideas that may be patentable.  Here are some template forms you may want to compare to your company's version, or (if your company does not have such things), use as a starting point for working with your patent attorneys to develop your company's version.   

IP Due Diligence Checklist

Your company or institution should have an established process for making certain that you have done your due diligence and have covered all the bases. use this as a starting point for working with your patent attorneys to develop your company's version.   

Company Program Evaluation

It can be helpful to have a mental checklist of things you are looking for in a good corporate intellectual property program.  Our courses teach the concepts, and this list will help you recall and apply them. 

The primary purpose is for you to have this as an thought structure when you are functioning in a company as a director, executive or manager, or are picking a company to join. 
 

IP References and Resources

Use this site as your resource.   
In particular, for patent matters, use it to augment your memory and refresh you on topics that arise in your work.  From here you can access whatever level of detail you may need.  

Country specific resources

China

European Union

India
Mexico
Canada

Podcasts

Blogs

In the U.S. about 200,000 patents are issued each year.

In the U.S. about 350,000 patent applications are filed each year.

There are about 8,000 patent examiners in the USPTO

USPTO Technology Center 1600 handles drug and biologic therapies and diagnostics Most patent examiners are attorneys

Patent examiners are divided among nine centers, each with a different technology focus.

The average amount of time a USPTO examiner spends with a patent is 19 hours.

Most patents have no, or very limited, commercial value.

About 3% of patents have a Patent Trials and Appeals Board hearing or litigation

Article 1, Clause 8 of the U.S. Constitution provides for a patent and trademark system

Length of time a patent lasts is 20 years plus extensions

Internal POA Notes for this page

Potential Contributors List - IP
https://www.dropbox.com/scl/fi/7ha4g4r9znzdusmbga6ie/Potential-Contributor-List-IP-Department.docx?rlkey=5hi6ipjeuepwhntadt8gdcpzl&st=j2uyyhys&dl=0

Things to include in courses

Rankings of Law Firms that do Patents

https://www.lmglifesciences.com/

https://www.iam-media.com/rankings/patent-1000

https://chambers.com/

https://harrityllp.com/services/patent-analytics/top-patent-firms/ 

2https://blog.patentbots.com/2024/04/2024-patent-quality-rankings-top-50.html

Leads for other countries

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