We have substantial experience with biotechnology and pharmaceutical
patents. One of the biggest challenges is obtaining and presenting
meaningful clinic data to establish that the invention has been "reduced
to practice." A compound that demonstrates efficacy against skin cancer
might not be a viable therapeutic for breast cancer.
Patent examiners frequently attempt to narrow claims to only the
ailments which have been tested in clinical settings asserting that
results cannot be extrapolated due to the "unpredictable nature" of the
biological arts. Our office has substantial experience in traversing
these types of rejections.
Inexperienced patent attorneys might simply agree to an allowance of
narrow claims without carefully considering the implications. If the
compound or diagnostic is a potential blockbluster, then such missteps
may cost the company millions of dollars in lost sales.