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Patent Management

  • 1.  Patent Management

    Posted 13-Feb-2021 12:47
    Dear Pharma folks,
    Are patent management and research activities are part of Regulatory affairs department responsibilities at your company or not? If not which department?
    The question applies to both Brand and generic companies.

    ---------------------------------
    Alaa El Kazak Msc., RAC
    Jeddah
    Saudi Arabia
    https://www.linkedin.com/in/alaaelkazak/
    http://bcert.me/snztdjygk
    ---------------------------------


  • 2.  RE: Patent Management

    Posted 14-Feb-2021 10:33
    As far as I’ve seen, patents are managed by R&D, with some input from Legal.

    ---------------------------------
    Hiral Dutia
    Regulatory Affairs Manager
    Third Pole Therapeutics
    Waltham, MA
    USA
    ---------------------------------





  • 3.  RE: Patent Management

    Posted 14-Feb-2021 12:23
    @Hiral Dutia Thanks alot for your input. Really appreciate it.

    ---------------------------------
    Alaa El Kazak Msc., RAC
    Jeddah
    Saudi Arabia
    https://www.linkedin.com/in/alaaelkazak/
    http://bcert.me/snztdjygk
    ---------------------------------





  • 4.  RE: Patent Management

    Posted 15-Feb-2021 07:26
    Yes, patents are managed by legal and R&D. QA can be involved if required.

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    Meena Garg
    Regulatory and QA Consultant, Vaccines
    Brampton ON
    Canada
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  • 5.  RE: Patent Management

    Posted 15-Feb-2021 15:01
    @Meena Garg 
    Thanks a lot for your input.​

    ------------------------------
    Alaa El Kazak Msc., RAC
    Jeddah
    Saudi Arabia
    https://www.linkedin.com/in/alaaelkazak/
    http://bcert.me/snztdjygk
    ------------------------------



  • 6.  RE: Patent Management

    Posted 14-Feb-2021 10:52
    Assuming a company has at least the following divisions (some of these might be combined):
    * R&D
    * Operations (including manufacturing)
    * Quality
    * Sales
    * Marketing
    * Regulatory
    * Clinical
    R&D should have primary responsibility for generating patents and typically works with outside patent attorneys to prosecute patents while internal corporate legal might be responsible for the administrative aspects. At larger companies legal will take more responsibility for IP, but the internal corporate legal departments at most companies don't have a patent attorney or a patent agent on staff.
    R&D should have primary responsibility for technical research related to the product, including collaborative research conducted with outside experts, but in most cases should be working closely with Marketing.
    Marketing should have primary responsibility for research related to customer needs while working in concert with R&D.
    Clinical is responsible for clinical research related questions while working closely with R&D and Marketing.
    At any competent, functional company there would be cooperation between functional roles so Regulatory would be in the loop on most research being conducted, but there are strong reasons why distinct functional roles exist with clear delineations of responsibility.


    ------------------------------
    Thomas Hoegh
    Edina MN
    United States
    ------------------------------



  • 7.  RE: Patent Management

    Posted 14-Feb-2021 12:26
    @Thomas Hoegh Thanks alot for the comprehensive information. I think setting clear roles is important for performance evaluation. Companies should put good weight on collaborative work in performance evaluation to achieve harmony and productivity.

    ---------------------------------
    Alaa El Kazak Msc., RAC
    Jeddah
    Saudi Arabia
    https://www.linkedin.com/in/alaaelkazak/
    http://bcert.me/snztdjygk
    ---------------------------------





  • 8.  RE: Patent Management

    Posted 15-Feb-2021 13:35
    Hello,
    I'd often had to request information related to patents, and from my experience RA collegues in Europe and/or US always advised me to contact  IP Legal directly as they often didn't have necessary information on hand and would not request it themselves. 
    Again, there was always some outsource company handling all patent's issues for our region.  So request would be forwarded to them by corporate Legal, then the back to me.
    If we are talking about some technical details etc, then it is R&D. (RA also might not even have it- they has to request it from R&D for me, e.g.)
    So as other people have already described it is R&D and Legal - they handle most of this work. 
    Oksana

    ------------------------------
    Oksana Kolosova
    Moscow
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  • 9.  RE: Patent Management

    Posted 15-Feb-2021 15:04
    @Oksana Kolosova Thanks a lot for detailing your experience. Really appreciate it.​

    ------------------------------
    Alaa El Kazak Msc., RAC
    Jeddah
    Saudi Arabia
    https://www.linkedin.com/in/alaaelkazak/
    http://bcert.me/snztdjygk
    ------------------------------



  • 10.  RE: Patent Management

    Posted 15-Feb-2021 13:50
    My experience has always been that patents were generally managed/owned by R&D and Legal rather than Regulatory Affairs.  In addition, I've also seen Sales and Marketing involved with respect to placement of the patent information on product labeling.

    ------------------------------
    Kevin Randall, ASQ CQA, RAC (Europe, U.S., Canada)
    Principal Consultant
    Ridgway, CO
    United States
    © Copyright 2021 by ComplianceAcuity, Inc. All rights reserved.
    ------------------------------



  • 11.  RE: Patent Management

    Posted 15-Feb-2021 14:00

     

     

    As usual, I agree with Kevin.  I'd only add that RA would probably need to get involved to provide the necessary review milestone dates in support of any patent term extension requests.

     

    Best regards,

     

    Ted

     

    --

    Theodore (Ted) Heise, PHD, RAC

    Vice President Regulatory and Clinical Services

     

    MED Institute Inc.

    1330 Win Hentschel Blvd.

    West Lafayette, IN  47906-4149 USA

    765.463.1633 ext. 4444

    http://medinstitute.com

    theise@medinstitute.com

     

     

     

     

     






  • 12.  RE: Patent Management

    Posted 15-Feb-2021 15:08
    Dear @Ted Heise, your addition to Kevin's note is really helpful in revealing the whole picture. Thanks.​

    ------------------------------
    Alaa El Kazak Msc., RAC
    Jeddah
    Saudi Arabia
    https://www.linkedin.com/in/alaaelkazak/
    http://bcert.me/snztdjygk
    ------------------------------



  • 13.  RE: Patent Management

    Posted 16-Feb-2021 10:11
    Ted brings up a really good point that I overlooked. There are a couple of quirks in U.S. law which affect patents for medical devices and pharmaceuticals. As a patent agent I can atest that these are not covered in the patent bar exam or any exam preparation materials I used. In fact, I only learned about them when studying for the RAC. If you're in charge of RA you should tactfully ensure that whoever is administratively responsible for patents is aware of those quirks and the value of keeping you in the loop. However, if your patent attorney is dedicated to medical device or pharmaceuticals they will very likely already be aware.

    ------------------------------
    Thomas Hoegh
    Edina MN
    United States
    ------------------------------



  • 14.  RE: Patent Management

    Posted 17-Feb-2021 01:34
    Dear Thomas, 
    Really enjoyed the discussion. It's really enriching my knowledge about the scope of practice,

    ------------------------------
    Alaa El Kazak Msc., RAC
    Jeddah
    Saudi Arabia
    https://www.linkedin.com/in/alaaelkazak/
    http://bcert.me/snztdjygk
    ------------------------------



  • 15.  RE: Patent Management

    Posted 15-Feb-2021 15:05
    @Kevin Randall Your insights are very valuable. Thanks.​

    ------------------------------
    Alaa El Kazak Msc., RAC
    Jeddah
    Saudi Arabia
    https://www.linkedin.com/in/alaaelkazak/
    http://bcert.me/snztdjygk
    ------------------------------