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Patents offer the intellectual property protections investors need to support biotech innovation.
That’s why the Biotechnology Innovation Organization (BIO) annual IP Council and Committees (IPC) Conference is important every year. But since the public and policymakers have recently shown limited understanding of the connection between patents and new treatments, explaining IP and developing new approaches is more important than ever.
“Some of you may remember that when you started law school, a lot of law schools did not offer classes in IP,” Emily Michiko Morris, professor and Associate Director of the Center for Intellectual Property Law & Technology at the University of Akron School of Law, told this year’s Nov. 17-19 conference. “It’s only been recently, in the last 15 years or so, that IP has really come to the fore.”
The only industry-sponsored conference focused specifically on intellectual property in biotechnology, the BIO IPC Conference brought biotech IP experts to Southern California to share insights and network with industry colleagues.
It’s part of BIO’s effort to strengthen the patent laws that enable life-saving innovation and help America maintain its strategic biotech leadership. Read more about why and how BIO supports IP here.
Panelists at the conference shared expertise on a range of important issues, including AI in patenting, joint inventorship, talking to academics, talking to policy makers, and more. The robust discussion reflected rapidly changing developments.
Dr. Hans Sauer, BIO’s Deputy General Counsel and VP for Intellectual Property noted the value of the discussion now.
“There has been a lot of talk about new and different approaches to IP questions under the new administration, including some improvements,” he said. “It’s great to have an event where we can prepare and be informed about these developments.”
Bio.News will have further coverage of the conference, including panels like these:
Passing the joint inventorship test
The panel on “Navigating the Road of Joint Inventorship” looked at “one of the muddiest concepts in the muddy metaphysics of the patent law.”
Panelists outlined the three elements comprising the standard for joint inventorship under U.S. law: contribution to conception, collaboration, and corroboration.
“Anyone that’s a joint inventor must have contributed in some significant manner to the conception of one or more claims in the patent,” explained Erin Foley, Ph.D, Counsel and Registered Patent Attorney at Foley Hoag.
The panelists broke down how the elements determining joint inventorship have impacted past cases involving questions over ownership. They also offered recommendations for avoiding disputes over who owns the patent:
- Maintain a good paper trail, starting with inventorship memoranda at the time of initial, internal invention disclosure.
- Have patent conversations early, before you have to address a room full of people who feel they should be coinventors.
- Remember inventors tend to get deposed if there is any legal dispute.
- In external collaboration situations, always have a written agreement prior to confidential disclosures.
AI: The patent attorney’s new assistant
While it was emphasized by a couple of panels that AI cannot be an inventor—only people own IP—there was an acknowledgement that AI can help patent lawyers.
During a panel on “Using AI In Patent Practice: Practical and Ethical Issues,” Ann McCrackin, Adjunct at UNH Franklin Pierce recommended testing AI tools before you commit to buying them, as well as developing a plan to train colleagues and, most important, understanding the ethics of their use.
Aaron Gin, PhD, Partner at McDonnell Boehnen Hulbert & Berghoff LLP said it’s important for those learning to use Large Language Models to understand the four elements of a good prompt:
- the perspective from which the AI is to approach the task (e.g. “you are an experienced chemical patent attorney”)
- clear instructions, output format, and constraints/guardrails for the AI;
- contextual information; and
- success criteria and examples of desired output.
“You can’t just provide a bare prompt without those source documents that the output will cleave to,” Gin explained. “Set clear guardrails. Show it what good looks like with a template. It’s also so important to iterate with these models. When you give it the initial prompt, you need to review the output and be critical about what the model is providing, and adjust the prompt as needed.”
It’s also important to understand the ethics of AI use, because, as Joshua Rich, Partner at Lippes Mathias explained, a lack of understanding could get you embarrassed out of court—or even cause you to lose out on a client’s patent.
“We’re all familiar with the fact that generative AI can hallucinate,” Rich said. “It’s most apparent in our field, in litigation, because there’s opposing counsel to call you out on it.”
