Are Public/Private Collaborations Accelerating Innovation?

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Gertrude Weaver
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1 Are Public/Private Collaborations Accelerating Innovation? Presented at NutrEvent Lille, 18 th June 2015 R. Frederic Henschel Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative of clients

3 Foley & Lardner LLP Over 800 attorneys > 60 practice areas Offices in Brussels, Shanghai, and Tokyo Full service law firm Intellectual Property Litigation Business Law Regulatory Tax Boston Brussels Chicago Detroit Jacksonville Los Angeles Madison Miami Milwaukee New York Orlando Sacramento San Diego San Diego/Del Mar San Francisco Shanghai Silicon Valley Tallahassee Tampa Tokyo Washington, D.C.

4 Excellence in Intellectual Property Foley ranked #2 as among "Kings of IP" in the Who Represents America s Biggest Companies survey by Corporate Counsel (2012) Ranked as a National Tier 1 firm in 2013 U.S. News Best Lawyers "Best Law Firms" in Patent Law, IP Litigation, Trademark Law and Biotechnology Law One of the few general practice firms in the country to be recognized among the top 10 for both patent litigation (by Corporate Counsel magazine) and patent procurement (by IP Today) Ranked #9 in total number of patent applications (IP Today 2013) Top patent litigation firms by Corporate Counsel Ranked No. 10 in total district court cases (2012) Ranked No. 10 in defense cases (2012) Ranked No. 14 on IP Today s 2011 Top Trademark Firms list, and ranked among the top trademark firms for seven years ( , 2007, )

5 IP Department Nearly 200 attorneys and 15 patent agents/law clerks Practice areas: Chemical, Biotechnology & Pharmaceutical Electronics Green Energy Technologies Information Technology & Outsourcing IP Litigation Mechanical & Electromechanical Technologies Trademark, Copyright & Advertising Medical Devices Privacy, Security & Information Management

6 Foley s Technology Breadth Chemical/ Pharmaceutical/ Nanotech/Cleantech Electronics / Mechanical Protein chemistry Chemical engineering Specialty chemicals Pharmaceutical chemistry & delivery systems Physical & natural products chemistry Organic/inorganic chemistry Agricultural chemistry & engineering process Photographic material & processing Photovoltaic Medical devices Material sciences Semiconductor fabrication Semiconductor circuit design Memory & logic system analysis Microprocessor system evaluation Electrolytic apparatus & processes Optical and fiber-optic system design Solid state gas censors Energy storage 40+ PhD s 40+ Masters Stem cell Personalized medicine Synthetic biology Molecular biology Endocrinology Genetic engineering Agricultural biotechnology Industrial biotechnology BioFuel Immunology Biochemistry Vaccines New Media/Internet/ Software/Other Content Technologies Business methods Financial services applications Healthcare IT Computer programming, including business software Communications systems design wired & wireless Smart grid e-commerce Online data privacy & security Biotech/Bio-Pharmaceutical/ Regenerative Medicine

7 What do we do? Patent office proceedings Licensing Litigation Opinions (e.g., freedomto-operate) Due diligence

8 Pitfalls for patenting in the US Disconnect between inventors and patent attorneys Publication issues Academics seek early publication Patents require novelty; weak grace periods Ownership and inventorship Co-owners share an undivided interest No accountability to other co-owners Initial ownership goes to inventors Cross-border deals must consider effect of local laws on ownership

9 Structuring the relationship Collaboration/Licensing Agreements Exclusive or non-exclusive license? Is the license an effective assignment/sale? Patent owner may want to limit scope of licensed technology ( field of use ) Who owns new discoveries made during the collaboration Royalties and milestone payments

10 Managing costs Learn about patents Take a basic patent course Get more involved in the patenting process US provisional application Very low fee, minimal filing requirements, no publication if unused Law firm risk sharing (Foley Accelerator) Consider university patenting policies and inventor incentives

11 Foley Startup Accelerator Risk sharing by waived and deferred payment of legal fees Startup Services Value Creation Services Friends and Family Financing First Venture Round 2014 Foley & Lardner LLP

12 Foley Startup Accelerator Phase 3 Friends & Family Financing 50% of fees deferred Phase I Phase 2 All deferred fees paid out of Phase 4 financing proceeds Phase 4 Startup Services Value Creation Services First Venture Financing (or equivalent) Fees waived Fees deferred Fees deferred Payable: Third party disbursements (filing fees, agent fees) 2014 Foley & Lardner LLP

13 US Patenting Incentives USPTO discounts Small entity (50% of normal fees) Micro entity (25% of normal fees) Provisional application filing fee for a micro entity is $65 Available to all (not just US applicants)

14 US Patenting Incentives Periodic fees start after grant of patent and increase over time Small/micro entity discounts apply Cost burden is shifted to those who benefit from using patents

15 Patenting incentives in Europe? No discounts at European Patent Office (EPO) Periodic fees for each state

16 Tech Clusters and VCs

17 Number of patents to cover all United States? 1

18 Number of patents to cover all of Europe? 40+

19 Pan-European Patent & Court? Expected in 2017 Unitary Patent One patent covering ratifying countries Examination by EPO (little change) Unified Patent Court Main division in Paris Regional/technical divisions in Munich and London New judges, new courts

20 Thank you and good luck!

Water Technology U.S. Patent Landscape Annual Report

Water Technology U.S. Patent Landscape Annual Report December 2013 Preface Water is life s mater and matrix, mother and medium. There is no life without water. ~Albert Szent-Gyorgyi Water is central to