1. Causes of disputes
Dispute Resolution in International Science and Technology Collaboration - WIPO
Ian Harvey
Chairman, Intellectual Property Institute & UK Government Intellectual Property Advisory Committee
Retired CEO, BTG plc
25 April, 2005

2. A patent is an uncertain right
A national right: apply for a patent in each country where the patent may be important
A license must be equally geographic in scope
Issues:
a patent is not an absolute right:
Novelty: at any time new “prior art” from anywhere may invalidate patents everywhere
Obviousness: courts may decide it was “obvious”
Costs: $250k lifetime for international patents
Defending patents against infringers can be complex and expensive

3. Patent pitfalls (1) NATURE OF CLAIMS:
too narrow
what are the products that flow from the invention?
do the claims actually cover these products?
not substantiated
patent specification must include full enabling disclosure
have the necessary experiments been carried out?
INVENTORSHIP NOT CLEARLY ESTABLISHED
Naming inventors incorrectly can invalidate your patent

4. Patent pitfalls (2) OWNERSHIP NOT CLEARLY ESTABLISHED
who employed the inventors?
who funded their research?
what materials did they use?
PRIOR ART
what disclosures have been made by rival groups?
have the inventors made damaging prior disclosures?
FREEDOM TO USE
Do ‘blocking patents’ exist?

5. Patent pitfalls (3) More at: http://www.btgplc.com/info/links_lit.php
THE IMPORTANCE OF PROPER LABORATORY NOTEBOOKS
US operates a ‘first to invent’ patent system, not ‘first to file’
Disputes are resolved by complex “interference” proceedings
To prove a priority date of invention, applicants must:
have proof of the conception of the invention
show diligence in its reduction to practice
Keeping lab notebooks in proper format is critical
More at:

6. Contract Issues
For a contract worth signing there is no standard contract
There is a standard checklist of questions to help define the nature of the agreement
What is a “fair” split of benefits and risks between licensor and licensee?

7. Contract Issues - Warranties
Only ownership
Not validity
Not non-infringement of third party patent rights

8. Contract Issues - Financial
People move - must be understandable in ten years’ time
Royalty must be factual e.g. revenue not “profit” based
Provide for audit – preferably by licensor
Post-patent-expiry payments
Patent extension obligations
Definition of milestone/trigger and termination payments
Beware “fully paid up” – have thresholds

9. Contract Issues - Termination
Change of control
Termination - failure to meet obligations
Which rights should survive termination
Definition of product

10. Contract Issues - Miscellaneous
Beware:
antitrust law – US and EU (TTBER)
“Most Favoured Nation” clauses
Sublicensing

11. The value of mediation
Allows managers on each side to justify sensible business concessions to “higher authority” ie CEO and Board
Helps CEOs to get gung-ho lawyers back in sensible business line
Brings the business people in and the lawyers out