Intellectual property

Published online: 23 June 2003, doi:10.1038/bioent741

Protecting innovation in biotechnology startups

*Eric K. Steffe and Timothy J. Shea, Jr. are directors at Sterne, Kessler, Goldstein & Fox, 1100 New York Avenue, NW, Washington, DC 20005. This article represents the views of the authors and should not be attributed to Sterne, Kessler, Goldstein & Fox or any of its former, current or future clients (esteffe@SKGF.com) and (tshea@skgf.com).

Glossary

Cease and desist letter. A letter sent by a patentee to a competitor demanding that the competitor stop all infringing activities.

Claims. A series of tersely worded statements at the end of the patent document that precisely defines the scope of exclusive rights attached to the patent grant.

Continuing application. A patent application that claims benefit of the filing date of an earlier filed patent application.

Design around. The practice of purposefully designing competing products to avoid patent claims covering patented product.

Embodiment. A 'nuts and bolts' detailed description of an example of the invention. A 'preferred embodiment' is the inventor's best-guess description of the product at the time the patent application is written.

Prosecution history. The documented negotiation that occurred between the patent applicant and the patent office examiner that led to issuance of the patent.

Stacking royalties. Royalties arising from multiple patents each dominating a company's product development effort; for example, producing a monoclonal antibody may require licenses to different patents covering the antigen, the vector, the purification method, etc.

Specification. A patent specification provides a clear and complete disclosure of the invention and a way of performing it, comprising a description, the claims, a summary and illustrations.

Willful infringement. Knowingly infringing a patent without a good-faith belief that the patent is either invalid and/or not infringed.