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“The pharmaceutical companies . . . are much more willing to go in earlier than they used to,” said Bruce Jenett, a co-chairman of DLA Piper’s life science practice. As they enter the market sooner, there is also mounting pressure from smaller life science companies to bring in lawyers sooner to answer Big Pharmas’ questions by conducting freedom-to-operate analyses – searches of whether drugs infringe on existing patents.
“Pharma wants to know that right away. And that’s a change,” said Ward, who represents both smaller life sciences and Big Pharmas such as Novartis.
“It used to be, years ago, that deals were done and we were some of the last people they called. . . . They’d say ‘Hey, we’re about to do this deal and we just need you to come and sign the patents,’” Ward said. “We’ve educated both our clients and our corporate attorneys to do this sooner.”
Ward said he used to conduct searches to identify whether a product is capable of being patented much sooner than conducting freedom-to-operate analyses – looking into whether the product infringes on existing patents. But now he often does both almost at the same time and the legal advice is helping to direct the scientific research, he said.
“In the last month, I’ve had a number of meetings with a number of clients early on in the process where they have several different ways they can go on certain products,” he said. “They brought us in to guide them very early on their decision making.”
There are often multiple solutions to a given scientific problem, Ward said, and knowing which solutions might infringe on existing patents can help direct research.
“It’s kind of an ongoing discussion between patent attorney and researcher and business people to make sure whatever paths they are going down are free and clear,” he said.
Having a Ph.D. doesn’t hurt, either, he added.
“You have to be able to understand the patents, understand their technology. And being able to communicate it is really important.”
