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Causes of disputes. Dispute Resolution in International Science and Technology Collaboration - WIPO. Ian Harvey Chairman, Intellectual Property Institute & UK Government Intellectual Property Advisory Committee Retired CEO, BTG plc 25 April, 2005. A patent is an uncertain right.

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Causes of disputes

Causes of disputes

Dispute Resolution in International Science and Technology Collaboration - WIPO

  • Ian Harvey

    • Chairman, Intellectual Property Institute & UK Government Intellectual Property Advisory Committee

    • Retired CEO, BTG plc

  • 25 April, 2005

A patent is an uncertain right
A patent is an uncertain right

  • A national right: apply for a patent in each country where the patent may be important

  • A license must be equally geographic in scope

  • Issues:

    • a patent is not an absolute right:

      • Novelty: at any time new “prior art” from anywhere may invalidate patents everywhere

      • Obviousness: courts may decide it was “obvious”

    • Costs: $250k lifetime for international patents

    • Defending patents against infringers can be complex and expensive

Patent pitfalls 1
Patent pitfalls (1)


    • too narrow

      • what are the products that flow from the invention?

      • do the claims actually cover these products?

    • not substantiated

      • patent specification must include full enabling disclosure

      • have the necessary experiments been carried out?


    • Naming inventors incorrectly can invalidate your patent

Patent pitfalls 2
Patent pitfalls (2)


    • who employed the inventors?

    • who funded their research?

    • what materials did they use?


    • what disclosures have been made by rival groups?

    • have the inventors made damaging prior disclosures?


    • Do ‘blocking patents’ exist?

  • Patent pitfalls 3
    Patent pitfalls (3)


      • US operates a ‘first to invent’ patent system, not ‘first to file’

      • Disputes are resolved by complex “interference” proceedings

      • To prove a priority date of invention, applicants must:

        • have proof of the conception of the invention

        • show diligence in its reduction to practice

    • Keeping lab notebooks in proper format is critical

    More at:

    Contract issues
    Contract Issues

    • For a contract worth signing there is no standard contract

    • There is a standard checklist of questions to help define the nature of the agreement

    • What is a “fair” split of benefits and risks between licensor and licensee?

    Contract issues warranties
    Contract Issues - Warranties

    • Only ownership

    • Not validity

    • Not non-infringement of third party patent rights

    Contract issues financial
    Contract Issues - Financial

    • People move - must be understandable in ten years’ time

    • Royalty must be factual e.g. revenue not “profit” based

    • Provide for audit – preferably by licensor

    • Post-patent-expiry payments

    • Patent extension obligations

    • Definition of milestone/trigger and termination payments

    • Beware “fully paid up” – have thresholds

    Contract issues termination
    Contract Issues - Termination

    • Change of control

    • Termination - failure to meet obligations

    • Which rights should survive termination

    • Definition of product

    Contract issues miscellaneous
    Contract Issues - Miscellaneous

    • Beware:

      • antitrust law – US and EU (TTBER)

      • “Most Favoured Nation” clauses

      • Sublicensing

    The value of mediation
    The value of mediation

    • Allows managers on each side to justify sensible business concessions to “higher authority” ie CEO and Board

    • Helps CEOs to get gung-ho lawyers back in sensible business line

    • Brings the business people in and the lawyers out