"When negotiating a patent, you have to foresee all the possible scenarios that may arise".
class Agustín Alconada, European patent agent and partner of ABG Intellectual Property, gave a lecture on industrial property at Master's Degree in management of Pharma-Biotech Companies.
PHOTO: Courtesy
"During the acquisition of a patent, it is important to be aware of the exact stage of the prosecution process. Whether it is a patent application or a granted patent, it is very important to foresee the possible obstacles regarding its validity, its ownership or the actions of third parties aimed at preventing the obtaining of industrial property rights". class A gustín Alconada, European patent agent and partner of ABG Intellectual Property, gave a lecture on industrial property at the subject "management de StartUps Biotech" which is given at the Master's Degree in management of Pharma-Biotech Companies that the School of Pharmacy and Nutrition gives at the campus of the University of Navarra in Madrid.
During the session, Alconada explained to the students that patents are another asset of a business and, as such, can be sold (assigned), rented (licensed) or mortgaged. "On the other hand, the prosecution and maintenance of a patent incur costs and, therefore, it is important to study what return is expected from the commercialization of an invention," he explained.
In addition, the examiner of the European Patent Office in the field of biotechnology from 1999 to 2007 recalled the importance of agreeing on the conditions under which a licence is granted in a process in which not only royalties or royalties have to be defined. "The territorial scope, transferability or the possibility of granting sublicenses are other essential elements that must be clearly delimited in the contract," he said. He also remarked that during the negotiation of the conditions under which the holder of an industrial or intellectual property right or of a trade secret grants a third party Schools of use, it is necessary to foresee all the possible scenarios that may arise during the term of the protection.
To illustrate his explanation, ABG Intellectual Property's partner relied on real cases, both successful and unsuccessful, with economic consequences running into millions of euros, which highlights the importance of negotiating contractual licenses.