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Freedom to operate & novelty IP strategy

CLIENT: Pharmaceutical UNIVERSITY spinout

Perception Partners was engaged by the CEO of a drug company spun out of a university. The CEO was referred by a grant-making institution that was evaluating the spinout company for funding. The company had developed a drug and delivery system for narcotic addiction, on which it had filed a broad patent application. However, the patent was not created by a “name brand” law firm, and it was vaguely drafted. Perception Partners was asked for expert (non-legal) opinions on IP risks and future patent filing strategies.

Search a century of everything. We designed expert patent and technical literature search strategies for both chemical compositions and drug delivery methods. Coverage was across multiple global territories, going back to the year 1900! Due to the vast initial disclosure, our search strategies considered chemical (Markush) structures, classifications, keywords, synonyms and drawings.

Find and fit into white spaces. During our searches we learned that enhancers or “boosters” to other similar molecules could deliver similar benefits as claimed in the client’s application. We modified the searches with client feedback to ensure that the novelty of their drug/delivery system remained justifiable to the grant-making institution, and further ruled out risks to freedom to operate by recommending which drug delivery methods would better fit into IP “white space” with fewer substitutes.

Build confidence, get funded. Based in part on our work, the IP was deemed novel and defensible enough to receive funding. Several million dollars were awarded to our client, and their company is now an independent startup with the university retaining equity.