International Patents

Should you Look Outside Your U.S. Comfort Zone to Patent Diagnostic Inventions?

February 9 (Tuesday) 
Noon – 1:15 PM EST
$150 AUTM Members/$225 Non-members

Are you looking for a global market for your diagnostic technology? Discover the how and why of expanding your patent borders beyond the U.S.

Kevin Noonan, PhD, JD – McDonnell Boehnen Hulbert & Berghoff
John Sears, PhD, JD, CLP – Innovators Legal
Charlie Shaw, PhD – Moffitt Cancer Center
Andrew Torrance, PhD, JD – Broad Institute

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Most tech transfer offices pursue a U.S.-centric approach to patenting. Patent protection is only sought outside the country when a licensee is willing to subsidize the expense. This approach usually makes sense, because of the U.S.’s very significant market, and relatively affordable and reliable patenting. However, recent U.S. Supreme Court decisions on patent eligibility have created a more challenging environment for diagnostic inventions. In this session, we will discuss the prospects for obtaining sufficient U.S. patent rights, and the merits of using a different patent strategy for diagnostic inventions in which U.S. foreign patent protection is the goal.

Learning objectives:

  • Understand prospects for U.S. protection based on your disclosure and claim strategies
  • Adapt your disclosure and claim strategies for patenting outside the U.S.
  • Balance differing claim and protection scopes for your greatest advantage