Performing a Preliminary Assessment of Patentability for a New Invention: Guidelines For Non-Patent Lawyers

Rodney Sparks, Senior Biotechnology Patent Counsel, University of Virginia Patent Foundation

Having an effective technology evaluation and patenting strategy in place may be critical to the growth of a company or to prevent a company from losing its competitive edge. When an invention is made at a company, when considering in-licensing, or when considering a merger or acquisition, a patentability assessment may be required. Patentability opinions prepared by patent lawyers can be quite expensive and the opinions are usually not guarantees that a technology is either patentable or unpatentable.

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USA IT University November 2008 Vol. 2, No. 5, Autumn 2008

Rodney Sparks

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Dr. Sparks joined the University of Virginia Patent Foundation in 2004 from the wellknown intellectual property group at Drinker Biddle & Reath LLP, in Philadelphia. His practice concentrated on biotechnology, pharmaceutical and chemical patent issues, including medicine and gene therapy. He has represented a variety of clients in the United States and abroad, including universities, biotechnology companies and pharmaceutical companies. Prior to working at Drinker, he was also in private practice at Morgan, Lewis and Bockius LLP, and at Akin, Gump, Strauss, Hauer and Feld, both in Philadelphia. After completing work on his Ph.D., Dr. Sparks completed postdoctoral training in cellular and molecular biology of cancer at the Johns Hopkins University and at the Mayo Clinic. He was on the faculty of the Oregon Health Sciences University School of Medicine and was a tenured faculty member of Tulane Medical School. While on the faculty at Tulane, he enrolled at Loyola University School of Law. Dr. Sparks’ current focus includes overseeing outside patent counsel, drafting and prosecuting patents in the pharmaceutical and biological sciences, preparing opinions and providing counseling on patent matters. He also is responsible for providing counsel on government reporting matters for the Patent Foundation and teaches law students in the Law Student Patent and Licensing Clinic of the University of Virginia School of Law. Dr. Sparks is a member of the American Intellectual Property Law Association and belongs to the “Biotechnology,” “Interference,” and “Relations with the U.S. Patent and Trademark Office” committees of that organization. He also is a member of the Licensing Executives Society and of the Association of University Technology Managers. Dr. Sparks has served in various consulting capacities for several agencies of the U.S. government. He also recently served as a judge for the Modern Marvel patent contest sponsored by the U.S. Patent and Trademark Office and InventNow.org.

University of Virginia Patent Foundation

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USA IT University November 2008 Vol. 2, No. 5, Autumn 2008