IAAE pre-conference workshop IAAE pre-conference workshop Gold Coast QLD :: 12 August 2006Gold Coast QLD :: 12 August 2006

Carol Nottenburg PhD JDCarol Nottenburg PhD JD

Freedom to Freedom to operate issues for operate issues for

startupsstartups

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Freedom-to-operate Freedom-to-operate (FTO)(FTO)

What’s FTO?What’s FTO? Ability to research, develop, and Ability to research, develop, and

commercialise a product without commercialise a product without infringing on someone else’s rightsinfringing on someone else’s rights

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Ways that rights are Ways that rights are conferredconferred

Patents, plant breeders’ rightsPatents, plant breeders’ rights

Material transfer agreements (MTAs)Material transfer agreements (MTAs)

Licenses, including “shrink-wrap” Licenses, including “shrink-wrap”

contractscontracts

Technology and research agreementsTechnology and research agreements

Genetic restrictions (e.g. GURTs, Genetic restrictions (e.g. GURTs,

hybrids)hybrids)

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Need for FTO AnalysisNeed for FTO Analysis Ability to sell commercialised Ability to sell commercialised

productproduct Patent owner can Patent owner can excludeexclude you from making, you from making,

using, selling, offering for sell, or importing using, selling, offering for sell, or importing her patented invention or product of patented her patented invention or product of patented methodmethod

Research and development planningResearch and development planning Identify potential partnersIdentify potential partners Obtain funding or investmentsObtain funding or investments

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IP AuditIP Audit Review all contracts and licenses for Review all contracts and licenses for

limitationslimitations employment Ksemployment Ks grants from funding agenciesgrants from funding agencies MTAsMTAs collaborative agreementscollaborative agreements

Patent landscape analysis of Patent landscape analysis of technologies usedtechnologies used

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Technology landscape Technology landscape analysis analysis

Determine technology area at issueDetermine technology area at issue Search for IP rights that control Search for IP rights that control

technologytechnology Identify patent owners, other key playersIdentify patent owners, other key players

Predict probable meaning of patent Predict probable meaning of patent claimsclaims Determine relevance to start-upDetermine relevance to start-up

Monitor pending patents and update Monitor pending patents and update search and analysissearch and analysis

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Find ways to avoid Find ways to avoid infringmentinfringment

License technologyLicense technology Use alternative technologiesUse alternative technologies Partner / collaborate / merge with Partner / collaborate / merge with

others others Confine R&D and commercialisation Confine R&D and commercialisation

to countries without patents on to countries without patents on technologytechnology

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Major challenges and Major challenges and strategiesstrategies

Education about patents, contracts, Education about patents, contracts, licenses, licenses,

Understand your rightsUnderstand your rights Know when / why you need to obtain a licenseKnow when / why you need to obtain a license

Enhance negotiation skillsEnhance negotiation skills Decide what you want and what you are willing Decide what you want and what you are willing

to give upto give up Get assistanceGet assistance

PIIPA: public interest IP professionals helping in PIIPA: public interest IP professionals helping in IP matters of LDCs; www.piipa.orgIP matters of LDCs; www.piipa.org

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