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Moneyball for Pharma Patents with Chief IP Counsel Steve Caltrider

Moneyball for Pharma Patents with Chief IP Counsel Steve Caltrider

Chief IP Counsel at Dana-Farber Cancer Institute and Chair of ABA's Section of IP sounds alarm about catastrophic impact of march-in proposal

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Show notes

Why does an $850 billion pharma company obtain only 50 patents per year?

Steve Caltrider, Chief IP Counsel at Dana Farber Cancer Institute, brings over 35 years of experience building valuable pharma patent portfolios and championing patent policies that promote innovation. Before Dana Farber, Steve rose to the role of General Patent Counsel at Eli Lilly. Steve has also served on the USPTO's Public Patent Advisory Committee and is currently the Chair of the ABA Section of IP Law.

In this episode, Steve shares the story of why and how he relied on data to reduce Eli Lilly’s patent portfolio, and explains why obtaining less patents is likely the better strategy for many large companies.

He also discusses the critical role of IP in getting medical innovations to patients, the potentially catastrophic impact of the administration’s march-in proposal, and his take on various developing patent policy issues.

Selected Topics

  • IP’s indispensable role in commercialization

  • Section 101 mess hindering development of diagnostics & potentially reducing drug costs

  • Data-driven patent strategies in the pharmaceutical industry

  • Impact of excessive USPTO fees on start-ups and smaller companies

  • How IP strategy differs at academic research institutions versus major pharmaceutical companies

  • Successfully navigating a career in patent law as in-house counsel

  • Role of outside counsel

  • Why all patent attorneys should pay attention to patent policy developments

Notable, Quotable

On the role of IP in ensuring that medical research reaches patients

“It’s roughly a billion dollars to develop that drug and actually make it accessible to patients as a drug. No one’s going to make that investment without IP. My role at the institute is to protect that discovery so that somebody will make that investment. Without the investment, it’s just going to sit in the laboratory and it’s not going to go anywhere and it won’t reach patients.”

On the impact of march-in proposal on non profits like Dana-Farber

“I’ve already had partners tell us: I’m willing to sponsor your research, I’m willing to help fund your research, but it can’t have any federally funded funding associated with it. Well, that can be catastrophic to us.”

ABA-IPL Chair’s Town Hall: Planning a Better Patent System

Register for “Session 6: How Far Can, And Should , USPTO Rulemaking Proceed in Addressing Issues of Double Patenting”: https://www.americanbar.org/groups/intellectual_property_law/events_cle/aba-ipl-chairs-town-hall/

Voice of IP
Clause 8
The podcast listened to by sophisticated in-house counsel, judges from around the world, IP policymakers, senior USPTO officials, and top patent dealmakers and attorneys to stay ahead of the curve by understanding the personalities and forces shaping IP.
Eli Mazour’s love of talking to people – along with his belief in the importance of America’s patent system – led him to start Clause 8. Clause 8 features conversations that provide strategic insights about how to best deal with various patent-related issues. Some of the previous guests include America’s great innovators, federal judges, USPTO Directors, top IP staffers on Capitol Hill, and Carole Baskin’s attorney from the documentary Tiger King.
It's the #1 podcast about IP and is in the top 2.5% of all podcasts according to Listen Score. The podcast has been covered and cited in many publications, including Bloomberg, Law360, Courthouse News Service, Above the Law, IAM, and Original Jurisdiction.