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About
MIHR
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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FENTON, Gillian M
Gillian M. Fenton is a patent and intellectual property attorney who specializes in the fields of biotechnology and pharmaceutical patents and licensing. She has over fourteen years’ experience as an attorney and is a member of the bar in Massachusetts, Maryland, and the District of Columbia and is also registered to practice before the U.S. Patent and Trademark Office. Ms. Fenton currently is Chief Intellectual Property Counsel at Emergent BioSolutions Inc., where she is responsible for all patent matters and licensing-related intellectual property matters. She previously served as in-house counsel at Biogen, Inc. and at several Boston-based law firms, including Foley Hoag LLP. Ms. Fenton is a 1992 graduate of Suffolk University Law School in Boston. Before she entered the field of law, she was a scientist in the immunology laboratory at Genetics Institute, Inc. She is a 1984 graduate of Trinity College in Hartford, Connecticut, where she received a bachelor’s degree in biochemistry.
Abstract
Freedom to Operate: The Law Firm’s Approach and Role
Abstract:
In the fields of health and agriculture, it has become increasingly important to understand the role of patent infringement in research, development, and commercial production. If a patented technology is used without permission, the patent holder may have the right to sue the researcher for patent infringement. Many companies routinely analyze the freedom to operate (FTO) of a research project or product, assessing whether it is likely to infringe existing patents or other types of IP rights. Private companies more routinely engage in FTO analysis than public sector research institutions because the infringement risks they face must be directly considered in the calculus of profitability. Public and not-for-profit private institutions also are becoming increasingly aware of the need for better FTO information, but FTO analysis is expensive, and its benefits must be weighed against its costs. This chapter provides an overview of the process, including considerations of when to invest in FTO analysis, and particularly focuses on the law firm’s role and perspective.
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