Much has been made of the so-called patent cliffs facing large pharmaceutical companies in 2012 and how executives are responding to these developments. Coupled with the United States moving to a first to file system in March 2013, it could be a definitive few quarters for the industry.
In a guest column for PharmExec, intellectual property attorneys Marian Flattery and Michael Flibbert suggested that how, when and where companies file their patent applications in the next year could have financial implications that span two decades.
With its transition to a first to file system, the America Invents Act is expected to bring more prior art into the application approval equation. Additionally, any patent granted under the new law will be subject to a post-grant review process that allows plaintiffs to challenge the validity of an invention on several fronts, including novelty, lack of utility and incomplete descriptions.
As a result, Flattery and Flibbert have encouraged clients to prioritize their applications quickly if they hope to file before March and avoid an increased risk of challenge. Additionally, those planning to file after the law goes into effect must familiarize themselves with the full depth of enablement and written description requirements.
This attention to detail will be all the more important as companies simultaneous manage a number of organizational changes. According to Reuters, mergers and acquisitions are at a four-year high in the pharmaceutical industry. Consolidating patent teams and getting everyone on the same page quickly should then be a top priority.