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OVERVIEW
• What is Intellectual Property?
• What is a patent?
• What is Patentable?
• How to Patent?
WHAT IS INTELLECTUAL PROPERTY?
• Patents
• Trade Marks
• Copyright
• Trade Secrets
• Industrial Design
• Plant Breeder’s Rights
Copyright
• provides an author with the sole right to produce or reproduce original literary, dramatic, musical and artistic works, either wholly or a substantial portion of it
• in Canada, generally, term of protection is life of author + 50 years; registration is not necessary
• author is first owner unless work is created in the course of employment
• engineering books, drawings, charts, maps, databases, manuals, computer programs, etc.
Copyright (cont’d)
• ideas are not protected, just the form of their expression
• no protection for independent discovery
• trend towards restricting protection for software
Trade Marks
• exclusive right to use a mark on specific goods or services, and to prevent others from using confusingly similar marks
• words, numbers, symbols, designs, etc.
• registration provides nation-wide protection
• rights are capable of existing in perpetuity
Trade Secrets
• Exclusive right to use and prevent unauthorized disclosures of information for as long as it remains confidential
• Information must be secret•Can provide long-term protection
• Owner must take steps to protect confidentiality•Physical barriers•Contractual barriers
• May provide competitive advantage where it is important that subject matter be kept secret
• Can protect unpatentable products and methods
Industrial Designs
• rights to a “design” applied to an article
• features of shape, configuration, pattern or ornaments that in a finished article, appeal to and are judged solely by the eye
• exclusive right to make, import, sell or rent any article to which the design has been applied
• in Canada, term of protection is 10 years
• registration is necessary• new• non-functional
PATENTS
• Can be assigned or licensed
• Assist in attracting funds or partners
• Necessary to bring products to public
The Patent Process
INVENTION
PREPARINGTHE
APPLICATION
PRIORITY DATE
Patent Application
INTERNATIONALFILING
CANADA
EUROPE
JAPAN
AUSTRALIA
CHINA
USA
HYPOTHETICAL EXAMPLE
• Dr. Smith synthesizes compound X
• Compound X inhibits growth of lymphoma cells
WHAT IS PATENTABLE?
• Does the “invention” contain patentable subject matter?
• Does the invention meet the patentability criteria of novelty, inventiveness and utility?
WHAT IS PATENTABLE SUBJECT MATTER?
• Genes
• Proteins
• Compounds
• New Uses of Known Compounds
• Devices
WHAT IS NOT PATENTABLE SUBJECT MATTER?
• Plants and Animals (Canada)
• Naturally Occurring Substances
• Scientific Theories
• Anything Immoral (Europe)
NOVELTY
• Not disclosed to the public
before patent application is filed (most countries)
more than one year before filing (Canada and U.S.)
DISCLOSURES
• Any communication not made in confidence that allows one to reproduce the invention
• Papers
• Abstracts
• Oral presentations
DISCLOSURES
Patenting does not preclude publishing if done in the right order!
• Use confidentiality agreements
• Don’t make enabling disclosures
DISCLOSURES
• Dr. Smith has told colleagues that he has synthesized an anti-cancer compound
• Does not disclose structure
• Novelty not destroyed
INTERNET SEARCHES
Free Databases:
• CIPO http://patents1.ic.gc.ca/intro-e.html
• USPTO http://www.uspto.gov/patft/index.html
• EPO http://www.european-patent-office.org/
• PCT http://pctgazette.wipo.int/
• IP Data Links http://ipdl.wipo.int/
• Espacenet http://ep.espacenet.com
Fee for Service Databases:
• Micro Patent http://www.micropatent.com/
• Patent Bank http://www.patentbank.com/
• Questel Orbit http://www.questel.orbit.com/
• STN http://www.stnweb.cas.org/
• Derwent http://www.derwent.com/
• Delphion (was IBM) http://www.delphion.com/
SEARCH RESULTS
• Compound X disclosed as paint thinner
• Compound X not novel
• Use of compound X to treat cancer is novel
INVENTIVENESS
• Would one be lead easily to invention
based on state of the art?
• Can vary from country to country,
examiner to examiner
INVENTIVENESS
• Compound X – use as paint thinner would not lead to use in cancer
• Ensure no structurally related compounds used in cancer
UTILITY
• Invention must have commercial potential
• Utility must be supported
• Throw away utilities not accepted
The Patent Process
INVENTION
PREPARINGTHE
APPLICATION
PRIORITY DATE
Patent Application
INTERNATIONALFILING
CANADA
EUROPE
JAPAN
AUSTRALIA
CHINA
USA
ANATOMY OF A PATENT APPLICATION
• Abstract
• Background
• Description of the Invention
• Description of the Figures
• Examples
• Claims
PREPARING THE APPLICATION
• Dr. Smith to provide full experimental details
• Has he tried analogs?
• Has he tested other cancers?
• Any In Vivo data?
CLAIMS
• Define monopoly
• Must include essential features
• Broad enough to be useful
• Narrow enough to exclude prior art
Types of Claims
• Compound• Composition• Use/Method• Process• Downstream product• Combination/subcombination• Library• Kit
SCOPE OF CLAIMS
• Dr. Smith made CH3
CH3 CH2
CH-NH-CH2-C CH
• Makes predictions on similar compounds that
may work
• Make sure claim does not include known anti-
cancer agents
SAMPLE CLAIMS
1. A method of treating cancer comprising
administering a compound of the Formula I
to an animal in need thereof.
R1
R2
CH-NH-CH2-C CH
wherein R1 is H or CH3 and
R2 is (CH2CH3)n where n is 0 to 8
SAMPLE CLAIMS
2. A method according to claim 1 wherein
R1 is H and R2 is CH2CH3 (Compound X).
3. A method according to claim 1 or 2
wherein the cancer is lymphoma.
The Patent Process
INVENTION
PREPARINGTHE
APPLICATION
PRIORITY DATE
Patent Application
INTERNATIONALFILING
CANADA
EUROPE
JAPAN
AUSTRALIA
CHINA
USA
PRIORITY APPLICATION
• File U.S. Application as priority application
any disclosures after filing won’t impact novelty
ensure disclosures consistent with scope of application
FILE THE APPLICATION
• Dr. Smith discovers compound X can treat hypertension
• Don’t disclose new use until put in application – otherwise novelty will be destroyed for many countries
The Patent Process
INVENTION
PREPARINGTHE
APPLICATION
PRIORITY DATE
Patent Application
INTERNATIONALFILING
CANADA
EUROPE
JAPAN
AUSTRALIA
CHINA
USA
THE PCT PROCESS
• File PCT if interested in 3 or more countries
• One language, one office
• Can designate over 100 countries
• Defers national filing fees for another 18 months (30 months from priority date)
PCT APPLICATION
Sample Time Line
National Phase
Priority Date
0
PCT Filing
Search Report/Written Opinion
Examination: Optional
•• • •18-20 3012
•
NATIONAL PHASE
• Applications filed in each country
• Application translated
• Local agents appointed
• Documents (Declarations, Assignments,
Powers of Attorney) executed and filed
EXAMINATION
• Examiners often hold Ph.Ds in relevant area
• Dr. Smith’s invention – Examiner likely Ph.D. in organic chemistry, specializing in anti-cancer drugs
• Search repeated by Patent Office
EXAMINATION
• Examiner will generally reject application
• Opportunity to argue, provide evidence
• Generally compromise on scope of claim
SCOPE OF CLAIM
• How many compounds has Dr. Smith made?
• How many types of cancer has he tested?
R1
R2
CH-NH-CH2-C CH
wherein R1 is H or CH3 and
R2 is (CH2CH3)n where n is 0 to 8
Inventorship
• Not authorship• Must be involved in "conception"• Not merely technical support or proof of
concept• Determined by claims• Importance of naming proper inventors
Inventorship
• Two scientists independently invent same
invention
• Both file patent applications
• First to file wins in most countries (EP, JP, CA)
• First to invent wins in the U.S.
Good Record Keeping
• Critical if interference arises in the U.S.
• Bound lab notebook signed, dated and
witnessed
• Witness – technician, co-worker, corroborator
• Also useful to antedate U.S. references
Ownership
• If invention made during course of employment with
company - company typically owns patent
• Universities: Depends on university policy• Ownership transferred by paper Assignment or
employee contract• In U.S. “Applicant” is inventor• All other countries: Applicant is owner