Patents in Drug Discovery

Francisco Bernardo Noriega is a founding partner of ABG Patentes and has more than 22 years of patent experience. His practice focuses on patent prosecution, including EPO oppositions and appeals, opinion work, portfolio management and advising in relation to IP strategy and litigation, principally in the pharmaceutical area. He is a qualified European Patent Attorney (EQE, 2004). Mr Bernardo has advised major pharmaceutical companies in several complex pan-European litigation cases and has considerable experience regarding Supplementary Protection Certificates for pharmaceuticals. Before founding ABG, Mr. Bernardo managed the patent department at Spanish pharmaceutical company Pharma Mar, S.A. (2001-03) and was an examiner at the European Patent Office in The Hague (1990-2001), concentrating in chemical technologies. He is a member of the Committee of Experts in Biotechnological patents for the European Commission, a member of the Biotech Committee of the European Patent Attorney Institute, coordinator of the EPI-CEIPI course in European Patent Law in Madrid, and a frequent speaker in various international Industrial Property forums and courses.

Patents, Inventions and Patentable Inventions; Brief History of Patents; Inventions and the Drug Discovery Process; Pharmaceutical Inventions and their Patent Protection Biotechnological inventions in Drug Discovery; Patents in the Pharmaceutical Industry; The Paris Convention: Priority right; Overview of the different Patent Systems. Filing Strategies; The European, US and Japanese Patent Systems; Substantive requirements. The State of the art; Substantive requirements. Inventive Step - Non-obviousness; Sufficiency of disclosure. Enablement and Best mode requirement in the US; Drafting and prosecuting a patent application; Rights to the patent. Inventor rights; Transfer of patents. Licensing; Technology transfer. Companies based on IP rights; Other forms of IP protection; Supplementary Protection Certificates and patent term extensions; IP and Regulatory Issues. Generics; Asserting patent rights; Patent infringement. Exceptions to patent infringement; Patent Invalidity. Non-enforceable patents; Pharmaceutical Patent Litigation in Europe; Pharmaceutical Patent Litigation in the US