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Performing a Preliminary Assessment of Patentability for a New Invention: Guidelines For Non-Patent Lawyers

November 2008
ITUniversity

Abstract

Having an effective technology evaluation and patenting strategy in place may be critical to the growth of a company or to prevent a company from losing its competitive edge. When an invention is made at a company, when considering in-licensing, or when considering a merger or acquisition, a patentability assessment may be required. Patentability opinions prepared by patent lawyers can be quite expensive and the opinions are usually not guarantees that a technology is either patentable or unpatentable.

Author

Portrait image of Rodney Sparks
Rodney Sparks
Senior Biotechnology Patent Counsel, University of Virginia Licensing & Ventures Group, USA

Rodney L. Sparks, J.D., Ph.D. joined the University of Virginia Licensing & Ventures Group in 2004 from the well known intellectual property group at Drinker Biddle & Reath LLP, in Philadelphia. His practice concentrated on biotechnology, pharmaceutical and chemical patent issues, including medicine and gene therapy. He has represented a variety of clients in the United States and abroad, including universities, biotechnology companies, and pharmaceutical companies. Prior to working at Drinker, he was also in private practice at Morgan, Lewis and Bockius LLP, and at Akin, Gump, Strauss, Hauer and Feld, both in Philadelphia. After completing work on his Ph.D., Dr. Sparks completed postdoctoral training in the cellular and molecular biology of cancer at the Johns Hopkins University and at the Mayo Clinic. He was on the faculty of the Oregon Health Sciences University School of Medicine and was a tenured faculty member of Tulane Medical School. While on the faculty at Tulane, he graduated from the evening program of the Loyola University School of Law. Dr. Sparks’ current focus includes overseeing outside patent counsel, drafting and prosecuting patents in the pharmaceutical and biological sciences, preparing opinions and providing counseling on patent matters. He also is responsible for providing counsel on government reporting matters for the Licensing and Ventures Group and teaches law students in the Law Student Patent and Licensing Clinic of the University of Virginia School of Law, where he is also a Lecturer. Dr. Sparks is a member of the American Intellectual Property Law Association and belongs to the Biotechnology, Inter Partes Patent Proceedings Committee, Licensing and Management of IP Assets, and Patent-Relations with the PTO committees of that organization. He also is a member of the Association of University Technology Managers. Dr. Sparks has lectured at national and international meetings on various patent and licensing topics, has served in various consulting capacities for several agencies of the U.S. government, and is an adjunct faculty member of the University of Virginia School of Law, teaching a clinic in patent law and licensing. He has served as a judge for the Modern Marvel patent contest sponsored by the U.S. Patent and Trademark Office and InventNow.org. Christopher D. Paschall, Ph.D., CLP is a licensing manager with the University of Virginia Licensing & Ventures Group. He was formerly a licensing associate with Emory University. He is a registered patent agent with the United States Patent and Trademark Office. Paschall received his doctorate in biomedical engineering from the University of Virginia, where his research focused on leukocyte adhesion in inflammatory responses and its application to targeted drug delivery. He also has a bachelor's degree in chemical engineering from the University of Virginia. Prior to graduate school, he worked as a quality control and process engineer at Klockner Pentaplast of America in Gordonsville, Va. At Klockner, he helped implement a company-wide software program to more efficiently manufacture pharmaceutical-grade plastic products.

Company

University of Virginia Licensing & Ventures Group

The University of Virginia Patent Foundation, doing business as the University of Virginia Licensing & Ventures Group, is responsible for technology transfer at the University of Virginia and licenses and patents intellectual property developed at the university. It advances promising research discoveries to the marketplace through licenses with industry, new venture formation, and other available pathways.

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