F2 Methods of Use: Are They Worth Patenting?
Track: IP Trends and Successful Practices
Target Audience: Intermediate
Michael Goldman, LeClairRyan
Kay Lawton, Metabolon
Paul Matri, Mount Sinai Innovation Partners
You have just received new invention disclosures regarding a new use for an old drug and a new platform technology for methods of detecting a disease. Although these technologies appear to present reasonable licensing opportunities, you need to determine if that is really the case. In this session we will answer all your questions, from a university perspective, regarding the ability to license and to enforce patents directed to such new methods of use. Find out the value of a university drug repurposing patent to the original drug-maker and the value of a university method of use patent to a diagnostic company. Recognize under what circumstances a drug-maker would be interested in licensing such repurposing rights. Learn what role product patent term, labeling for U.S. Food & Drug Administration (FDA) versus off-label use, and generic competition play in making your new method of use claims attractive for licensing. Our panelists will discuss the obstacles for enforcing these types of patents and whether or not those challenges undermine the value in pursuing such patents.
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