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Patent Trends and Strategies for Protecting Biotech/Pharma Inventions in the United States

25 Sep 2015

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Patent Trends and Strategies for Protecting Biotech/Pharma Inventions in the United States

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In Year 2014, 578,802 utility patent applications were filed in United States and 50.7% of the utility applications were filed by foreign entities. It is not surprising that U.S. patents are popular among local and foreign research organizations and individuals. However, filing an application is only the beginning. There are a number of hurdles that one may encounter in the U.S. Patent system and applicants should bear in mind that less than half of filed patent applications are going to be granted. Understanding some general principals and trends of U.S. patent law will help researchers, scientists, entrepreneurs, and investors protect their biotech and pharmaceutical inventions in the U.S.

This seminar will begin with a general overview on patents and a discussion on criteria and strategy for building a patent portfolio for biotechnology and pharmaceutical inventions. Then the speaker will share updates on recent case law development and U.S. Patent and Trademark Office guidelines on eligible subject matter. Finally, the seminar will conclude with a case study showing strategies for getting a U.S. patent.

About the speaker: 
Dr. Susie S. Cheng was born in Hong Kong and is fluent in Cantonese and Mandarin. Her practice focuses on patent issues relating to biotechnology, drug screening, small molecules, biologics, pharmaceuticals, enzyme replacement therapies, molecular diagnostics, bioinformatics, biofuels, nanotechnology, medical devices, cosmetic products, and personal health products.

Dr. Cheng advises her clients on patent strategies during all stages of drug development including pre-clinical and clinical activities, paragraph IV certifications, and preparation of notice letters, as well as successfully obtained key patents related to therapeutics developed for marketing. Her services include inventorship investigation, conducting freedom-to-operate, patentability, non-infringement, and validity opinions.

Dr. Cheng advises clients from private equity firms and venture capital firms on due diligence investigations of target companies, which can include reviewing patent portfolios, products, and involvement in legal proceedings, for investment, licensing, and acquisition opportunities. She also advises her clients on agreements, such as license agreements, research agreements, non-disclosure agreements, stock-purchase agreements, and assignment agreements.

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