HGF webinar: Getting your first filing right
Event date: 23rd March 2022
HGF hosted a webinar on Wednesday 23rd March on Getting your first filing right.
One of the most often asked questions of patent attorneys is: “when should we file?” Both timing and content of a first filing should be important strategic decisions. This is especially so in the therapeutic field where wide breadth of claim is desired coupled with maximum use of the available 21 year patent term from first filing. Circumstances can nevertheless necessitate a first filing needing to be considered in a pressurised situation. Even so, strategy from the start needs to be a matter of careful consideration to avoid later problems. The CRISPR patent battle in Europe illustrates well how first filing issues can be a source of costly, unwanted problems which are avoidable.
This presentation covered the considerations required at the first filing stage to align patenting strategy with commercial strategy and minimise problems arising from both formal and content issues. The presentation covered such issues as the evidence required to get over the plausibility hurdle in relation to inventive step and sufficiency as applied to compound and therapeutic use claims, as well as formal considerations such as where to file and who should file, often especially important considerations in the case of collaborative projects involving inventors outside the UK. The presentation also dealt with how to ensure you keep priority of a first filing both legally and to maximise disclosure benefit.
Dr Claire Irvine – Partner & Patent Attorney