Key Points in Biotechnological Patents to be Exploited

Alfredo   Mateos   García; José   Rafael   López-Moya; Patricia      Ramos

Abstract

Patents in some biotechnological fields are controversial. Despite this fact, the number of patent applications increases every year. Total revenues in the global biotechnology market are expected to increase in the middle term. Nowadays, the bioeconomy is an important socio-economic area, which is reflected in the number of firms dedicated to or using biotechnology. The exploitation of biotechnological patents is an essential task in the management of intellectual capital. This paper explains the multiplicity of factors that influence the exploitation of biotechnological patents; specifically, the internal and external key points of patents exploitation. The external determining factors for patents are: (i) the market need for biotechnological products and services, (ii) the importance of the freedom to operate analysis before entering the market, and (iii) efficiency in prosecution by Patent Offices. This paper primarily focuses on the internal determining factors, more particularly, the characteristics that the patent’s owner must take into consideration in order to have a strong, broad subject-matter in the granted patent. The experimentation needed to obtain an adequate scope of the subject- matter in the claims is a critical issue in the exploitation of a patent or patent application.

Keywords: Biotechnology, patent, exploitation, novelty, inventive step, support in the description, sufficiency of the disclosure, scope of the protection, intellectual property, intellectual capital.