- When big biopharma comes to conduct diligence, key patents will be scrutinized.
- Before diligence started, give key patents a check-up ahead of time.
- Ensure things are in good order and make corrections if needed.
- Don’t wait! Some corrections have deadlines.
What does biopharma scrutinize in these key patents?
- How well they cover the product.
- Whether their validity will hold up during patent challenges.
- When the patents expire.
Where should the patent check-up focus?
- Identify/confirm the most important patents, especially those covering your drug and the one most likely selected for patent extension.
- Does the patent claim everything it should for protection, with appropriate levels of claim scope? Could/should other claims be added?
- Do changes in the research program require any patent changes?
- Does new patent case law reveal any vulnerability in the claims?
- Make sure this patent has the longest patent term to which it is entitled in terms of potential regulatory extensions and patent office adjustments.
- Are there double patenting concerns that can reduce patent term?
- What options are available to improve the strength of the patent?
Why the review and timing are important!
- Maximizing the strength of key patents can be crucial to uphold the value of your products.
- If a biopharma suitor thinks the patents have weaknesses and/or the patent term is shorter than your estimate, it can discount valuation in their eyes.
- Run your portfolio through a check-up with patent counsel experienced with recognizing and dealing with a host of different issues.
- Do it regularly to take advantage of the full array of corrective measures and minimize surprises during diligence.
