Life Sciences & Biotech
Our Clients
Schlich acts for a wide range of life sciences clients who cover the gamut of enterprises from start-up businesses to large multinational corporations, from universities to mature businesses via spin out companies. Every company is unique and thus every organisation has different needs.
Our team of life sciences attorneys tailor the service we provide to match the varying aims of our clients. We are well versed in supporting the different needs of our clients, whether that is supporting a multinational business with a large existing portfolio of patent rights or a developing business founded on protecting unique technical developments.
Life Sciences & Biotech
Claiming and Protecting Your Inventions
Our Schlich attorneys are well versed in understanding and claiming rights to inventions in the life sciences arena. We prepare and file patent specifications for all aspects of life sciences technologies: from stem cell technologies to DNA-editing systems; from improved antibodies to novel microbes; from medical devices to small molecule pharmaceuticals.
Whilst our core expertise is in Europe, we have extensive experience in securing patent rights in the USA, Japan, Canada, Australia, India, China and other major marketplaces. Furthermore, we have a wide network of associates in other jurisdictions with whom we co-operate in order to gain the broadest commercially useful patent rights that we can achieve. In this way, the value of a client’s intellectual property can be best protected and realised.
Start Up Companies
Start-up companies often require significant assistance in ensuring efficient use or resources to add value to the company and obtain useful protection. We understand that patent rights and intellectual property can be the most valuable possessions owned by a start-up. Thus, our role is often to understand and advise on the efficient deployment of resources in order to protect their valuable technical advances and better develop their business.
Developing Businesses
However, sometimes the transition of a business from start-up or spin out to maturity means that in-depth intellectual property advice is required as part of the foundation and organisation of a firm. To achieve this, one of our attorneys can be intimately involved with the early commercial aspirations of our client. Thus, in addition to obtaining patent rights, we can monitor and analyse the patent rights and pending patent claims owned by competitors. We also review and analyse the state of the marketplace and the effect that ongoing deals will have on our client’s business. Thus, we are able to support a developing business through from drafting the original patent applications and guided their prosecution with the support of our associates in the relevant countries.
Large Firms
Multinational corporations may have larger internal departments whose staff have significant experience in relation to filing and prosecution of patent applications. However, multinational breadth means that detailed jurisdiction-specific advice in often needed to obtain optimum protection. While the intention of different national patent systems can be the same, navigation of the differences between jurisdictions will often require a local expert to avoid the pitfalls. This is notably the case when jurisdictions have subtle but important differences in law and practice, e.g. between the USA and the European Patent Organisation. These differences can appear slight, but can have a significant effect on the rights an applicant can obtain.
One example of this is in the drafting and prosecution of patent application relating the developments in and the optimisation of CRISPR technologies. The CRISPR-Cas system is a Nobel-prize winning leap forward in gene editing technology and the pace of its commercial development has been intense. Schlich acts for Intellia Therapeutics, Inc., both in relation to the drafting and prosecution of patent applications relating to the development and improvement of CRISPR-Cas-based gene editing, and also in opposing the patent claims of potential competitors.
Contentious Proceedings
Schlich attorneys are experienced in contentious Proceedings before the European Patent Office (EPO) and before the UK Intellectual Property Office (UKIPO). Our attorneys are skilled in delivering cost-effective advice when considering, preparing, and prosecuting contentious Proceedings. Our focus is always on yielding commercially relevant results for our clients.
By way of example, and to continue the case study above, Schlich attorneys have successfully opposed patent claims for fundamental aspects of the use of the CRISPR system in eukaryotes. Other patents have been opposed, and limited in their scope to versions comprising particular features, such as specific guides, enzymes from unusual organisms, or changes to the enzymes. In this way, our clients are better able to operate in the marketplace. However, appeals are ongoing and Schlich attorneys will be in attendance to continue to defend our client’s position.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases relevant to the life sciences & biotech sector.
UPC Court of Appeal Suggests the Description is Relevant to Deciding Whether Certain Embodiments Are Excluded from the Scope of the Claims
The question of whether and to what extent the description should be used to interpret the claims of a patent is a disputed topic in patent law, with there being a need to construe the claims as they are written whilst also reading them in the context of the patent as a whole. In its first substantive decision, the UPC’s Court of Appeal suggests the description can be used to decide whether arguably impractical embodiments are excluded from the scope of the claims.
Back in the Maze: Is the Decision of the Referring Board in G 2/21 About to be Overturned?
When the referring board’s written decision was issued in the case underpinning the “plausibility” referral (G 2/21) late last year, it provided much-needed certainty about how the EPO would apply G 2/21 in the future. However, that certainty has been short-lived because the opponent in that case has filed a petition for review of the decision by the Enlarged Board of Appeal.
Generic Drug Manufacturers Protected by the “Skinny Label” provisions of the Hatch–Waxman Act
The US Federal Circuit has given a decision that blocks a potential form of “evergreening” that pharmaceutical companies might have used to prevent launch of generic versions of their drugs through asserting later-filed method-of-use patents for the drug.
The Maze of Plausibility Case Law: The Referring Board in G 2/21 Suggests a Way Through
When the EPO’s Enlarged Board of Appeal issued its decision in G 2/21 (the “plausibility” referral) earlier this year, many were left wondering what the requirements were for a patent applicant/proprietor to be able to rely on post-filed evidence in support of inventive step. The referring board in the case underpinning the referral (T 116/18) has recently issued a decision setting out its interpretation of G 2/21 in detail, offering new insight into how the EPO is likely to apply this important decision in the future.
Federal Circuit leans on the Supreme Court’s recent decision in Amgen v. Sanofi to find Baxalta’s functionally defined antibody claims invalid for lack of enablement.
Just a few months ago, the US Supreme Court handed down its decision in Amgen v Sanofi (Amgen), namely that Amgen’s patents broadly claiming antibodies that inhibit the PCSK9 protein are invalid for lack of enablement. Now, in a decision that broadly mirrors Amgen, the Federal Circuit have found Baxalta’s functionally defined antibody claims insufficient.
EPO Enlarged Board of Appeal set to consider in G 1/23 the degree to which enablement impacts the status of a commercially available product as state of the art
Central to the assessment of patentability at the EPO is the definition of ‘state of the art’. Article 54(2) EPC defines the state of the art as ‘everything made available to the public’ before the effective filing date of a patent application. But when the thing made available to the public is a product with a defined chemical composition, how much of that composition is made available to the public by the simple disclosure of the product? G 1/92 provided an answer but as the current referral to the EPO’s EBA shows, there are gaps that need filing.
Not all epitopes are equal: patent rights in antibodies for challenging targets.
T0435/20 demonstrates the limit of obviousness of the “standard” procedure of generating antibodies for peptide epitopes. T0435/20 also serves to teach us that non-routine methods for generating antibodies for rare or “challenging” epitopes must be fully disclosed and apply to all of the antibodies that are claimed.
The UKIPO confirms that an SPC is for the product in the marketing authorisation on which it is based and not further uses for the product
It is well known that a pharmaceutical product can find alternative uses than the application for which it was originally developed. Furthermore, further patents can be granted to additional usage and dosage regimes for such pharmaceutical products. The question considered by the Hearing Officer in this case was whether a marketing authorisation for a single active compound (safinamide) was also sufficient to support a supplementary protection certificate (SPC) application for the use of safinamide in combination with levodopa/PDI for the treatment for Parkinson’s disease.
Get in touch
Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.
