1. IAAE pre-conference workshop Gold Coast QLD :: 12 August 2006 Carol Nottenburg PhD JD Freedom to operate issues for startups

2. 2 Freedom-to-operate (FTO) Whats FTO? Whats FTO? Ability to research, develop, and commercialise a product without infringing on someone elses rights Ability to research, develop, and commercialise a product without infringing on someone elses rights

3. 3 Ways that rights are conferred Patents, plant breeders rights Patents, plant breeders rights Material transfer agreements (MTAs) Material transfer agreements (MTAs) Licenses, including shrink-wrap contracts Licenses, including shrink-wrap contracts Technology and research agreements Technology and research agreements Genetic restrictions (e.g. GURTs, hybrids) Genetic restrictions (e.g. GURTs, hybrids)

4. 4 Need for FTO Analysis Ability to sell commercialised product Ability to sell commercialised product Patent owner can exclude you from making, using, selling, offering for sell, or importing her patented invention or product of patented method Patent owner can exclude you from making, using, selling, offering for sell, or importing her patented invention or product of patented method Research and development planning Research and development planning Identify potential partners Identify potential partners Obtain funding or investments Obtain funding or investments

5. 5 IP Audit Review all contracts and licenses for limitations Review all contracts and licenses for limitations employment Ks employment Ks grants from funding agencies grants from funding agencies MTAs MTAs collaborative agreements collaborative agreements Patent landscape analysis of technologies used Patent landscape analysis of technologies used

6. 6 Technology landscape analysis Determine technology area at issue Determine technology area at issue Search for IP rights that control technology Search for IP rights that control technology Identify patent owners, other key players Identify patent owners, other key players Predict probable meaning of patent claims Predict probable meaning of patent claims Determine relevance to start-up Determine relevance to start-up Monitor pending patents and update search and analysis Monitor pending patents and update search and analysis

7. 7 Find ways to avoid infringment License technology License technology Use alternative technologies Use alternative technologies Partner / collaborate / merge with others Partner / collaborate / merge with others Confine R&D and commercialisation to countries without patents on technology Confine R&D and commercialisation to countries without patents on technology

8. 8 Major challenges and strategies Education about patents, contracts, licenses, Education about patents, contracts, licenses, Understand your rights Understand your rights Know when / why you need to obtain a license Know when / why you need to obtain a license Enhance negotiation skills Enhance negotiation skills Decide what you want and what you are willing to give up Decide what you want and what you are willing to give up Get assistance Get assistance PIIPA: public interest IP professionals helping in IP matters of LDCs; www.piipa.org PIIPA: public interest IP professionals helping in IP matters of LDCs; www.piipa.org

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