Andrew T. Serafini, Ph.D., partner in the Intellectual Property Group at Fenwick & West LLP, and Melissa Harwood, patent agent in the Intellectual Property Group at Fenwick & West LLP, were published in the biannual Society for Technology Management (STEM) Newsletter with their article "Technology Transfer Considerations for Stem Cell Technologies."
A recent rise in stem cell patent application filings across the globe suggests heightened activity in the area of stem cell technology transfer and research and development. Notable stem cell patent filing activity has been observed in the United States, Europe, Australia, Canada, Japan, Germany, China, the United Kingdom, and Israel.
Due to the large number of stem cell patents internationally, due diligence is a critical aspect of stem cell technology transfer. Due diligence focuses primarily on patentability, freedom to operate and third party obligations. Third party obligations may include, for example, material transfer agreements (MTAs) and patent licenses. Due diligence provides insight into the competitive landscape and assists in valuing a particular technology in view of that landscape.
The stem cell field is characterized by a large number of dominant patents. Access to some of those technologies is essential in the stem cell research and development, and thus MTAs and patent licenses are widespread. The dominance of certain patents and the increase in global activity in stem cell research and development creates a challenge for technology transfer and imposes an even greater value on the due diligence process for introducing new technologies to the market.