- Agustín Alconada, European Patent Attorney and partner of ABG Intellectual Property, lectured on “Industrial Property in Biotech Companies”
Patents are another asset of a company and, as such, can be sold (transferred), rented (licensed) or mortgaged. On the other hand, the prosecution and maintenance of a patent imply costs. Therefore, it is important to determine what return is expected from the commercialization of an invention. These are some of the reasons why the University of Navarra (UNAV) and IESE Business School include a session on intellectual property in their Master´s Degree in Pharmaceutical and Biotechnology Management.
In this first edition of the training, Agustin Alconada has been the expert in charge of this session. He is a partner in the Biotechnology Department of ABG Intellectual Property and he holds a PhD in Pharmacy. In addition to that, he is European Patent Attorney with prior experience as examiner of the European Office Patents in the field of biotechnology (1999-2007).
“While purchasing a patent, it is important to take into account at which exact point is the prosecution process. Whether it is a patent application or a granted patent, it is very important to anticipate possible obstacles in terms of its validity, ownership or the actions of third parties aimed at preventing the obtention of industrial property rights“, Agustin emphasized.
Contractual licenses
Agustín Alconada also recalled that defining royalties is not the only condition that needs to be defined when negotiating a license agreement. Geographical scope, transmissibility, or the possibility of sublicensing are other essential elements that must be clearly delimited in the contract.
“During the negotiation of the conditions under which the holder grants a third party license of use, it is necessary to provide for all possible scenarios that may appear during the term of protection of intellectual property or trade secrets rights“, he said.
To illustrate his explanation, the ABG Intellectual Property´s partner relied on real cases, both success and failure. Their economic consequences are worth millions of euros, which shows the importance of negotiating contractual licenses.
Pharmaceutical and Biotechnology Management
Agustin Alconada´s lecture is part of the topic “Management of Biotech StartUps”. Its syllabus also includes sessions on other legal, economic, financial and organizational issues.
This first edition of the Master´s Degree in Pharmaceutical and Biotechnology Management began in October. 27 students from 12 degrees and 9 different universities are enrolled in the programme. After a first phase of theoretical training, they will all have the opportunity to carry out practical training in companies of the sector that will run until November.
