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Biotechnology and Pharmaceutical Law
Intellectual Property

Intellectual Property is critical for the successful development and commercialisation of biotech/drug innovations. Intellectual property laws are complex and undergoing constant review with emerging new technologies. Research Institutes and biotech and pharmaceutical companies involved in R&D need to be fully informed of the laws to maximise returns and minimise the risks of infringement. Procedures and policies for the management and protection of intellectual property are essential.

Assessment of Existing Intellectual Property

A common misconception exists that patented inventions can be used for research or experimental purposes without patent infringement.

To avoid possible infringement, organisations require procedures for assessing existing intellectual property to ensure that research can be undertaken in the field without patent infringement. Stephens Lawyers & Consultants works with clients and experts in the field to assess existing patents and develop strategies to avoid or minimise the risk of infringement. Where necessary, licences or material transfer arrangements are negotiated with the owner of the intellectual property.

Ownership of Intellectual Property Resulting from R&D

Disputes relating to ownership of biotech innovation and resulting intellectual property can be avoided by clear agreements with employees, consultants and other stakeholders. We advise on all aspects of intellectual property ownership including procedures and agreements for determining and dealing with ownership of intellectual property.

Protection of Intellectual Property

Organisations should have in place procedures and policies for the protection of intellectual property to ensure that resulting intellectual property is not invalidated by premature or unauthorised disclosure of research results. For valid patent protection the invention and associated research results must not be published prior to the filing of the patent application. Confidentiality agreements together with appropriate education programs, are essential for ensuring that researchers, commercialisation organisations and other stakeholders understand their obligations and responsibilities relating to non-disclosure and protection of intellectual property. Stephens Lawyers & Consultants work with their clients to protect and realise the commercial value of their innovations whether through patent, trade secret, copyright, trade mark or contractual protection.

Management of Intellectual Property

On going management and review of intellectual property, research and commercial outcomes and activities is required for maintenance and optimisation of existing protection and commercial value of the innovation. This also involves monitoring patent filings and commercial activities of competitors and other parties in the field for potential patent or unauthorised use of confidential information or trade secrets. Stephens Lawyers & Consultants assist clients in the development and implementation of intellectual property management programs.

Commercialisation of Intellectual Property

Maximising the value of intellectual property requires consideration and understanding of the most appropriate way of commercialising technology. We understand the commercial and legal complexity associated with commercialisation of innovation in Australia and international markets whether through partnering, joint ventures, private equity funding, establishment of spin-off companies, public listings, licensing or technology transfer. We work with our clients in all aspects of the process including assessment of opportunities, due diligence, negotiation and preparation or review of legal documentation.

© Stephens Lawyers & Consultants, June 2009. Written by Katarina Klaric, Principal, Stephens Lawyers & Consultants

Disclaimer: This is not intended to be a substitute for obtaining legal advice.

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