Guest article

Patently wise: what, how and where to patent

By Michel Morency and James Ewing

- Last updated on GMT

Related tags: Patent

Patent protection can be an effective tool for excluding
competitors and generating revenues, if used wisely and married to
a company's business strategy.

Conversely, obtaining patents can quickly become an expensive and wasteful proposition if done haphazardly and not tied to an effective business strategy. With the nutraceutical industry spending more and more resources on research and development, companies are turning to patents to protect their new products and investments. However, to get the most out of a patent, manufacturers need to familiarize themselves with the limits and potential of the process. The first step in designing an effective patent strategy is to understand what a patent can and cannot do for the owner. A patent does​ permit the patent owner to exclude competitors from making, using, importing and selling the invention, as claimed in the patent. The fact that a commercial product is described in the patent application is of no use if it is not covered by the scope of the claims. Accordingly, it is important to continuously monitor any claim amendments and any change to the product to ensure that the claims actually cover the final commercial product. A patent does not​ grant the patent owner the right to make, use, or sell the invention if doing so would infringe another party's patent. Therefore, a patent strategy should always include a review of third party patents. Optimally, such reviews are conducted on a regular basis. Minimally, a review should be conducted prior to the writing of the patent application and again prior to launching a product commercially. Finally, it is important to note that a patent can only be enforced in its country of origin. For example, a US patent cannot be enforced against an infringer for infringing activities in Canada or any other country. Consequently, patents must be filed in each country where a company desires to exclude competitors. Obtaining patent protection in several countries can be a very expensive ordeal. The filing and translation costs alone can reach $10,000-15,000 per country. Costs of securing patent protection in a large number of countries can easily reach multiples of $100K or millions over the lifetime of the patents. A common international patent strategy is to pursue patents in key developed health care markets including the US, Canada, Europe, Japan and Australia. Decisions for additional countries are added based on the expected costs and relative benefits of attaining such protection in individual foreign markets. A common misconception is that a company needs to obtain a patent in each and every country in which the product will be sold. A patent is not required to make, use, or sell in a given country; it is only useful to exclude competitors. Thus, seeking patent protection in countries where the company will not commercialize their product, or will not enforce their patents against infringers, is a waste of valuable resources. Your patents are an important asset to your company. A well planned and executed patent strategy is essential to position your company in the global marketplace both today and in the future. Knowing what, when, where and how to patent your proprietary technology is a basis for a sound strategic business plan. Michel (Mike) Morency, Ph.D., LL.B.,is a partner in Foley's Boston office. He is a member of the firm's Biotechnology & Pharmaceutical and Private Equity & Venture Capital Practices, as well as the Life Sciences, Emerging Technologies, Food and Nanotechnology Industry Teams. He can be contacted at 617.342.4080 or via email at zzberapl@sbyrl.pbzJames F. Ewing, Ph.D., J.D., is senior counsel in Foley's Boston office. He is a member of the firm's Biotechnology & Pharmaceutical Practice and the Life Sciences and Food Industry Teams. He can be contacted at 617.342.4088 or via email at wsrjvat@sbyrl.pbz

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