Key issues in building a strong life sciences patent portfolio. Tom Harding and Jane Wainwright Potter Clarkson LLP

Size: px
Start display at page:

Download "Key issues in building a strong life sciences patent portfolio. Tom Harding and Jane Wainwright Potter Clarkson LLP"

Transcription

1 Key issues in building a strong life sciences patent portfolio Tom Harding and Jane Wainwright Potter Clarkson LLP

2 SECURING INNOVATION PATENTS TRADE MARKS DESIGNS Award winning, expert intellectual property services for the life science industry

3 Key issues in building a strong life sciences patent portfolio By Tom Harding and Jane Wainwright, Potter Clarkson LLP In order to ensure that a patent strategy provides the right protection at the right point in time for both the patent owner and its commercial partners, many issues must be considered and often earlier than might be imagined by those unfamiliar with the patenting process. This chapter explores some of the key issues to be addressed when setting out to build a strong patent portfolio in the life sciences field. Before filing a patent application Most innovators consider filing a patent application only when they have the results of a particular set of experiments in hand. However, the entire patent portfolio relating to the technology and what needs to be protected (and when) should be considered as early as possible in the research phase and should continue to be re-evaluated, particularly before a patent application is filed with the intention of protecting a particular technology. Timing First, it is essential that there is no public disclosure of the new technology before an initial patent application has been filed. While some countries have so-called grace period provisions (eg, the United States) which allow a patent application to be filed after an applicant s own disclosure of the invention, this is not the case for the vast majority of countries worldwide; therefore, any disclosure of the technology before a patent filing could be fatal for obtaining patent protection in many commercially important countries. Nevertheless, it is also possible to file a patent application too early before sufficient data is generated to be representative of the whole invention, and which must be included in a patent application on filing. Therefore, consideration as to what experiments might best support patent prosecution for the new technology should begin as early as possible in the research process. The general rule is that the more experimental the support included in a patent application, the broader the protection around a technology that patent offices will allow. This could be the difference between obtaining protection for only the particular compound or antibody developed to treat one specific disease and a much broader class of compounds or antibodies which are defined only functionally and potentially to treat a much broader range of diseases. Content It is also important to ensure that sufficient time and expertise have been invested in the actual drafting of the patent application. Once a patent application is filed, no new matter can be added, and thus the patent application will stand or fall based on the wording of the initial filing. Consequently, it is essential that the patent application is drafted carefully in order to pursue a reasonable scope of protection around the technology, including full and properly defined technical terms and sufficient fall- IAM Life Sciences

4 back positions of narrower scope which can circumvent other similar technologies both known and unknown to the applicant at the time of drafting. In tandem, it is also essential to consider what part of the invention is most commercially useful to the applicant and/or its current or future collaborator so that the patent application can be crafted specifically to cover that technology. Patent drafting must also take into account any particular wording which may be required by various patent offices in order to meet their national laws. For example, it is vital to think about how the claims can be worded to cover subject matter deemed patent eligible in the United States (eg, in the aftermath of recent cases such as Mayo v Prometheus and the 2014 US Patent and Trademark Office guidelines on patent eligibility), or to address the exclusion of methods of treatment per se in many other territories, such as the European Union. On filing a patent application How The first decision will be where to file an initial patent application. For the first filing, this might be a simpler decision because, for nearly all territories, a first priority application can be filed in just one country (typically, but not necessarily, the applicant s home country). A priority application provides a 12-month window within which to file corresponding patent applications in different countries around the world. The decision of where to file subsequently can be delayed further by filing It is almost always not financially viable to seek patent protection in large numbers of countries an international Patent Cooperation Treaty (PCT) patent application, either as the first patent application or, more commonly, as the subsequent application filed in the first 12- month window. A PCT application can never grant as a single patent (there is no such thing as an international patent), but instead acts as a bundle of national applications which are subject to a centralised initial search and opinion and publication, after which the final countries in which to pursue patent protection must be chosen. Using a priority application followed by a PCT application can conveniently delay the decision (and associated cost) of where to file by at least 30 months from the date of filing the priority application. Due to the high cost of pursuing patent protection in multiple countries, delay is usually preferable as it allows more time to: raise funds to pay for patent prosecution in various territories; and develop the technology in order to ascertain which aspects are commercially important to protect and where. Where The countries in which patent protection is pursued will depend on a number of commercial factors. A granted patent will protect the manufacture, sale, distribution, use, import and possession of the technology covered by that patent in the country where the patent was granted. Therefore, the markets where the technology will be used or sold (by the applicant or a future collaborator or licensee) are likely to be the most important factor in the choice of patent protection in order to deter competitors. The manufacturing location of the applicant and/ or its key competitors may also be of interest. The decision is a balance between the cost of pursuing patent protection in a particular country and the benefit associated with doing so. It is almost always not financially viable to seek patent protection in large numbers of countries, and often it is viable to seek patent protection only in a handful. Therefore, establishing the key markets or the likely manufacturing locations of competitors is essential. Further, in Europe it is also possible to 56 IAM Life Sciences

5 delay choosing most European countries by obtaining a European patent via the European Patent Office (EPO), which has the potential to become effective in the chosen countries which are party to the European Patent Convention. The likely introduction of the unitary European patent system in the coming years will mean that only a unitary patent will be required to cover the whole of Europe (whether that will necessarily be a benefit to building a strong portfolio is a separate issue). After the patent has granted Once patents have been granted in the chosen countries (a process which may take many years), there are still more strategic factors to consider. First, patents require renewal at the relevant patent offices on a regular basis; therefore, due to the ongoing costs, it is necessary to continue to consider the cost-benefit equation regularly after a patent grants and, where appropriate, to prune out commercially unimportant patents. Third-party attacks There is also the risk of third parties attempting to invalidate patents by various post-grant procedures such as the EPO opposition procedure and now post-grant review in the United States (both of which allow a third party to oppose grant within nine months), as well as revocation procedures in national courts. For example, Australia has a third-party opposition procedure which applies between allowance and grant. In Europe, third parties may also file observations at the EPO before grant to highlight reasons why a patent should not be granted. Defending such attacks by third parties can be both expensive and time consuming and can potentially result in long periods of uncertainty regarding the protection in place. The need to defend such attacks provides further rationale for investing the time and effort upfront to ensure that the strongest possible patent application is filed which has Tom Harding Senior associate tom.harding@potterclarkson.com Tom Harding is a European and UK patent attorney. He obtained undergraduate and master s degrees in genetics and applied biomolecular technology, respectively, from the University of Nottingham. Before joining Potter Clarkson, Mr Harding worked for a number of years as a research scientist in cancer drug discovery for AstraZeneca. Jane Wainwright Partner jane.wainwright@potterclarkson.com Jane Wainwright is a European and UK patent attorney specialising in the life sciences. She has been providing commercially strategic advice to industrial and academic clients on patents and oppositions in the life sciences field for many years. Ms Wainwright has also spoken on European patent practice at multiple international conferences. IAM Life Sciences

6 the best chance against such attacks. Of course, all of these attacks are options for patent holders to consider in view of third-party (ie, competitor) patents which might affect their freedom to operate. Hence, part of a strong patent strategy is to monitor the patent position of competitors in order to be aware of deadlines for making an attack. Extending patent protection Often patent protection in the later years of commercialisation is more valuable, as by then the technology may be fully commercialised and bringing in higher revenues than in the early years. In this case, the ability to halt third parties from doing the same for as far into the future as possible might be very valuable indeed. For this reason, supplementary protection certificates (SPCs) can be of critical importance in the life sciences. SPCs provide an effective extension of patent protection by up to fiveand-a-half years in order to account for delays in acquiring regulatory approval via clinical or field trials. As any particular product to be covered by an SPC must be specified in the patent claims, it is also important to consider whether SPCs will potentially be required as early as possible and, at the latest, before the claims are granted. Another way to extend patent protection is to grow a patent portfolio by filing further patent applications directed to different, or more particular, aspects of the technology. For example, following a broader patent to the platform technology, a later patent filing could protect individual commercial embodiments of the technology. This phasing of patent filings provides a potentially useful means of effectively extending protection for the important commercial embodiments beyond the 20 years of the initial patent. Phasing patent filings requires careful consideration on drafting of both the earlier application(s) to ensure that the particular embodiments are not disclosed or hinted at in a way which would prevent their being protected in a later patent filing, and the later application(s) to ensure that the later patent filing is new and non-obvious over the earlier filing. Where there has been a relatively minor update to the technology, it may be appropriate to take advantage of mechanisms such as a continuation-in-part application in the United States, which retains the filing date of an original filing for the shared subject matter but adds in the updated technology. Although that approach will not extend the term of protection beyond that of the earlier filing, it does allow for the protection of updated aspects of the technology which might otherwise be considered obvious and not susceptible to patent protection. Another consideration for more minor innovations is to file for utility models (also known as petty or short-term patents). These are available only in certain countries, typically have less stringent inventive step requirements and lower official fees, and can be registered relatively quickly (ie, in weeks rather than years) compared to standard patents. However, they can be limited to certain technologies (which may exclude biotechnological inventions in some countries) and have a shorter duration of protection. Comment There are many distinct strategic considerations along the way to building a strong patent portfolio in the life sciences arena. The strongest recommendation is to consider as much as possible upfront and before filing an initial patent application, so that the future of the whole portfolio has the greatest chance of providing the commercial protection required and at the time when it is really needed. Potter Clarkson LLP The Belgrave Centre Talbot Street Nottingham NG1 5GG United Kingdom Tel Fax Web 58 IAM Life Sciences

China: Managing the IP Lifecycle 2018/2019

China: Managing the IP Lifecycle 2018/2019 China: Managing the IP Lifecycle 2018/2019 Patenting strategies for R&D companies Vivien Chan & Co Anna Mae Koo and Flora Ho Patenting strategies for R&D companies By Anna Mae Koo and Flora Ho, Vivien

More information

Patent application strategy when, where, what to file?

Patent application strategy when, where, what to file? Patent application strategy when, where, what to file? Dominique Winne Examiner (ICT) 7 November 2017 Contents IP strategy When, where, and what to file Relevant aspects for filing strategy 2 1 The four

More information

Practical Guidelines For IP Portfolio Management

Practical Guidelines For IP Portfolio Management For the latest breaking news and analysis on intellectual property legal issues, visit Law today. www.law.com/ip Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law.com Phone: +1 646

More information

How To Draft Patents For Future Portfolio Growth

How To Draft Patents For Future Portfolio Growth For the latest breaking news and analysis on intellectual property legal issues, visit Law today. www.law.com/ip Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law.com Phone: +1 646

More information

Practical Strategies for Biotechnology and Medical Device Companies to Manage Intellectual Property Rights

Practical Strategies for Biotechnology and Medical Device Companies to Manage Intellectual Property Rights Practical Strategies for Biotechnology and Medical Device Companies to Manage Intellectual Property Rights Matt Jonsen Dorsey & Whitney LLP Angie Morrison Dorsey & Whitney LLP Intellectual Property Patents

More information

Getting the Most From Your IP Budget: Strategies for IP Portfolio Management and Litigation Avoidance

Getting the Most From Your IP Budget: Strategies for IP Portfolio Management and Litigation Avoidance Getting the Most From Your IP Budget: Strategies for IP Portfolio Management and Litigation Avoidance March 19, 2009 A Web conference hosted by Foley & Lardner LLP Welcome Moderator Andrew Rawlins, Partner,

More information

Ways to Maximize Your Intellectual Property Assets

Ways to Maximize Your Intellectual Property Assets Ways to Maximize Your Intellectual Property Assets David B. Cupar, Esq. Member McDonald Hopkins LLC Asset Maximization Protecting Diagnostic Technology Commercializing Diagnostic Technology Theme for today

More information

IP, STRATEGY, PROCEDURE, FTO Peter ten Haaft (PhD, Dutch and European Patent Attorney)

IP, STRATEGY, PROCEDURE, FTO Peter ten Haaft (PhD, Dutch and European Patent Attorney) LS@W IP, STRATEGY, PROCEDURE, FTO 25-05-2018 Peter ten Haaft (PhD, Dutch and European Patent Attorney) tenhaaft@nlo.eu Content 1. Introduction 2. IP overview 3. IP strategy 4. IP procedure Introduction

More information

Innovation Office. Intellectual Property at the Nelson Mandela University: A Brief Introduction. Creating value for tomorrow

Innovation Office. Intellectual Property at the Nelson Mandela University: A Brief Introduction. Creating value for tomorrow Innovation Office Creating value for tomorrow PO Box 77000 Nelson Mandela University Port Elizabeth 6031 South Africa www.mandela.ac.za Innovation Office Main Building Floor 12 041 504 4309 innovation@mandela.ac.za

More information

Patents. What is a patent? What is the United States Patent and Trademark Office (USPTO)? What types of patents are available in the United States?

Patents. What is a patent? What is the United States Patent and Trademark Office (USPTO)? What types of patents are available in the United States? What is a patent? A patent is a government-granted right to exclude others from making, using, selling, or offering for sale the invention claimed in the patent. In return for that right, the patent must

More information

11th Annual Patent Law Institute

11th Annual Patent Law Institute INTELLECTUAL PROPERTY Course Handbook Series Number G-1316 11th Annual Patent Law Institute Co-Chairs Scott M. Alter Douglas R. Nemec John M. White To order this book, call (800) 260-4PLI or fax us at

More information

INTELLECTUAL PROPERTY OVERVIEW. Patrícia Lima

INTELLECTUAL PROPERTY OVERVIEW. Patrícia Lima INTELLECTUAL PROPERTY OVERVIEW Patrícia Lima October 14 th, 2015 Intellectual Property INDUSTRIAL PROPERTY (INPI) COPYRIGHT (IGAC) It protects technical and aesthetical creations, and trade distinctive

More information

Intellectual Property Law Alert

Intellectual Property Law Alert Intellectual Property Law Alert A Corporate Department Publication February 2013 This Intellectual Property Law Alert is intended to provide general information for clients or interested individuals and

More information

University joins Industry: IP Department. Georgina Marjanet Ferrer International, SA

University joins Industry: IP Department. Georgina Marjanet Ferrer International, SA University joins Industry: IP Department Georgina Marjanet Ferrer International, SA Topics Ø What is IP? Ø Importance of IP in the pharmaceutical industry Ø IP Department: tasks and responsibilities Ø

More information

Yearbook. Building IP value in the 21st century

Yearbook. Building IP value in the 21st century Yearbook Effective use of the Patent Cooperation Treaty Mathieu de Rooij and Alexandros Lioumbis ZBM Patents & Trademarks 2017 Building IP value in the 21st century Effective use of the Patent Cooperation

More information

PROTECTING INVENTIONS: THE ROLE OF PATENTS, UTILITY MODELS AND DESIGNS

PROTECTING INVENTIONS: THE ROLE OF PATENTS, UTILITY MODELS AND DESIGNS PROTECTING INVENTIONS: THE ROLE OF PATENTS, UTILITY MODELS AND DESIGNS By J N Kabare, Senior Patent Examiner, ARIPO Harare, Zimbabwe: 21 to 24 October, 2014 Outline Patents and their role Utility Models

More information

Research Collection. Comment on Henkel, J. and F. Jell "Alternative motives to file for patents: profiting from pendency and publication.

Research Collection. Comment on Henkel, J. and F. Jell Alternative motives to file for patents: profiting from pendency and publication. Research Collection Report Comment on Henkel, J. and F. Jell "Alternative motives to file for patents: profiting from pendency and publication Author(s): Mayr, Stefan Publication Date: 2009 Permanent Link:

More information

PATENTS FOR CHEMICALS, PHARMACEUTICALS AND BIOTECHNOLOGY

PATENTS FOR CHEMICALS, PHARMACEUTICALS AND BIOTECHNOLOGY PATENTS FOR CHEMICALS, PHARMACEUTICALS AND BIOTECHNOLOGY FUNDAMENTALS OF GLOBAL LAW, PRACTICE AND STRATEGY by PHILIP W. GRUBB European Patent Attorney CLARENDON PRESS OXFORD 1999 CONTENTS Preface to the

More information

WIPO REGIONAL SEMINAR ON SUPPORT SERVICES FOR INVENTORS, VALUATION AND COMMERCIALIZATION OF INVENTIONS AND RESEARCH RESULTS

WIPO REGIONAL SEMINAR ON SUPPORT SERVICES FOR INVENTORS, VALUATION AND COMMERCIALIZATION OF INVENTIONS AND RESEARCH RESULTS ORIGINAL: English DATE: November 1998 E TECHNOLOGY APPLICATION AND PROMOTION INSTITUTE WORLD INTELLECTUAL PROPERTY ORGANIZATION WIPO REGIONAL SEMINAR ON SUPPORT SERVICES FOR INVENTORS, VALUATION AND COMMERCIALIZATION

More information

Mathys & Squire. Agri-Tech Intellectual Property Rights in Europe. mathys-squire.com

Mathys & Squire. Agri-Tech Intellectual Property Rights in Europe. mathys-squire.com Mathys & Squire Agri-Tech Intellectual Property Rights in Europe mathys-squire.com About Mathys & Squire Ranked Tier 1 in Legal 500, Mathys & Squire is one of Europe s most highly regarded intellectual

More information

11th Annual Patent Law Institute

11th Annual Patent Law Institute INTELLECTUAL PROPERTY Course Handbook Series Number G-1316 11th Annual Patent Law Institute Co-Chairs Scott M. Alter Douglas R. Nemec John M. White To order this book, call (800) 260-4PLI or fax us at

More information

Clarity of thought: telling Congress how to improve 101

Clarity of thought: telling Congress how to improve 101 Clarity of thought: telling Congress how to improve 101 01 03 2016 Brian Emfinger ra2studio / Shutterstock.com Amid the continuing uncertainty about subject matter eligibility in the US, particularly for

More information

Slide 15 The "social contract" implicit in the patent system

Slide 15 The social contract implicit in the patent system Slide 15 The "social contract" implicit in the patent system Patents are sometimes considered as a contract between the inventor and society. The inventor is interested in benefiting (personally) from

More information

Building a Competitive Edge: Protecting Inventions by Patents and Utility Models

Building a Competitive Edge: Protecting Inventions by Patents and Utility Models Topic 4 Building a Competitive Edge: Protecting Inventions by Patents and Utility Models Training of Trainer s Program, Teheran 8 June 2015 By Matthias Kuhn, MBA University of Geneva, Unitec, Switzerland

More information

ESTABLISHING A LEGAL MONOPOLY THROUGH PATENT LAW By Gold & Rizvi, P.A. The Idea Attorneys

ESTABLISHING A LEGAL MONOPOLY THROUGH PATENT LAW By Gold & Rizvi, P.A. The Idea Attorneys ESTABLISHING A LEGAL MONOPOLY THROUGH PATENT LAW By Gold & Rizvi, P.A. The Idea Attorneys PATENT BASICS In its simplest form, a patent is a legal monopoly granted by the United States Government to an

More information

PATENT ATTORNEYS TRADE MARK ATTORNEYS

PATENT ATTORNEYS TRADE MARK ATTORNEYS PATENT ATTORNEYS TRADE MARK ATTORNEYS 02 INDEPENDENT THINKING. COLLECTIVE EXCELLENCE. Your intellectual property assets are of great value to you. To help you to secure, protect and exploit them, you need

More information

PATENT ATTORNEYS TRADE MARK ATTORNEYS

PATENT ATTORNEYS TRADE MARK ATTORNEYS PATENT ATTORNEYS TRADE MARK ATTORNEYS INDEPENDENT THINKING. COLLECTIVE EXCELLENCE. Your intellectual property assets are of great value to you. To help you to secure, protect and exploit them, you need

More information

International IP. Prof. Eric E. Johnson. General Principles

International IP. Prof. Eric E. Johnson. General Principles International IP Prof. Eric E. Johnson ericejohnson.com General Principles territoriality Dependence, independence, central attack Procedural harmonization Substantive agreements National treatment Minima

More information

Protect your ideas. An introduction to patents for students of natural sciences, engineering, medicine and business administration

Protect your ideas. An introduction to patents for students of natural sciences, engineering, medicine and business administration Protect your ideas An introduction to patents for students of natural sciences, engineering, medicine and business administration Learning goals Understand what intellectual property is about Balance the

More information

Technology Commercialization Primer: Understanding the Basics. Leza Besemann

Technology Commercialization Primer: Understanding the Basics. Leza Besemann Technology Commercialization Primer: Understanding the Basics Leza Besemann 10.02.2015 Agenda Technology commercialization a. Intellectual property b. From lab to market Patents Commercialization strategy

More information

The Patent Prosecution Highway: Strategic Considerations in Accelerating U.S. and Foreign Patent Prosecution

The Patent Prosecution Highway: Strategic Considerations in Accelerating U.S. and Foreign Patent Prosecution The Patent Prosecution Highway: Strategic Considerations in Accelerating U.S. and Foreign Patent Prosecution ACC Quick Hits June 13, 2012 Dr. John K. McDonald Dr. Michael Schiff Kilpatrick Townsend & Stockton

More information

Patents in Europe 2018/2019. Helping business compete in the global economy. Litigating patents under the UPC system

Patents in Europe 2018/2019. Helping business compete in the global economy. Litigating patents under the UPC system In association with Litigating patents under the UPC system df-mp Dörries Frank-Molnia & Pohlman Patentanwälte Rechtsanwälte PartG mbb Sandra Pohlman, Philipp Nordmeyer and Dominik Ho Patents in Europe

More information

Key Strategies for Your IP Portfolio

Key Strategies for Your IP Portfolio Key Strategies for Your IP Portfolio Jeremiah B. Frueauf, Partner Where s the value?! Human capital! Physical assets! Contracts, Licenses, Relationships! Intellectual Property Patents o Utility, Design

More information

Twelve ways to manage global patent costs

Twelve ways to manage global patent costs 37 Twelve ways to manage global patent costs By Anthony de Andrade, President and CEO, and Venkatesh Viswanath, Senior Analyst, Quantify IP In the face of scathing budget cuts, there is tremendous pressure

More information

Finland Russia Ukraine CONTENTS

Finland Russia Ukraine CONTENTS RUSSIA PATENT Finland Russia Ukraine CONTENTS RUSSIAN PATENT What can be protected? What cannot be protected? Who can file? In which language? Formalities for filing a patent application Examination procedure

More information

WIPO NATIONAL WORKSHOP FOR PATENT LAWYERS

WIPO NATIONAL WORKSHOP FOR PATENT LAWYERS ORIGINAL: English DATE: May 1997 GOVERNMENT OF THE FEDERAL DEMOCRATIC REPUBLIC OF ETHIOPIA WORLD INTELLECTUAL PROPERTY ORGANIZATION WIPO NATIONAL WORKSHOP FOR PATENT LAWYERS organized by the World Intellectual

More information

Lundbeck s view on the EU IP systems

Lundbeck s view on the EU IP systems Lundbeck s view on the EU IP systems Forårsmøde IPR in the EU May 26 2011 H. Lundbeck A/S 1 Agenda The Innovative Pharmaceutical Industry and why IP is so important for Lundbeck Lundbeck s wish list for

More information

What s in the Spec.?

What s in the Spec.? What s in the Spec.? Global Perspective Dr. Shoichi Okuyama Okuyama & Sasajima Tokyo Japan February 13, 2017 Kuala Lumpur Today Drafting a global patent application Standard format Drafting in anticipation

More information

Patent. Fish &Richardson

Patent. Fish &Richardson Patent Fish &Richardson > > 0 >> A 5G2 > > 0 0 >> >> 1 8 0 9 G H 3 0 H O 9 P D 4 A 4 4 > 6 7 0 1 6 7 A B 9 3 spark INNOVATION, > * 7 / / / to a protected PORTFOLIO As one of the world s premier intellectual

More information

MPEP Breakdown Course

MPEP Breakdown Course MPEP Breakdown Course MPEP Chapter Worksheet The MPEP Breakdown training course will provide you with a clear vision of what the Patent Bar is all about along with many tips for passing it. It also covers

More information

Patent Due Diligence

Patent Due Diligence Patent Due Diligence By Charles Pigeon Understanding the intellectual property ("IP") attached to an entity will help investors and buyers reap the most from their investment. Ideally, startups need to

More information

PATENT ATTORNEYS EXAMINATION

PATENT ATTORNEYS EXAMINATION 2011 PATENT ATTORNEYS EXAMINATION PAPER C The New Zealand Law and Practice relating to Foreign Law Regulation 158 (1) (c) Duration: 3 hours (plus 10 minutes for reading) When considering answers to the

More information

Programs for Academic and. Research Institutions

Programs for Academic and. Research Institutions Programs for Academic and Research Institutions Awards & Recognition #1 for Patent Litigation Corporate Counsel, 2004-2014 IP Litigation Department of the Year Finalist The American Lawyer, 2014 IP Litigation

More information

COMPUTER-IMPLEMENTED INVENTIONS

COMPUTER-IMPLEMENTED INVENTIONS COMPUTER-IMPLEMENTED INVENTIONS Strategies for a successful protection of software-related inventions in Europe Ing. Sandro SANDRI Ing. Marco LISSANDRINI European Patent Attorneys Topics Legal Aspects

More information

FICPI views on a novelty grace period in a global patent system

FICPI views on a novelty grace period in a global patent system FICPI views on a novelty grace period in a global patent system Jan Modin, CET special reporter, international patents Tegernsee Symposium Tokyo 10 July 2014 1 FICPI short presentation IP attorneys in

More information

Fact Sheet IP specificities in research for the benefit of SMEs

Fact Sheet IP specificities in research for the benefit of SMEs European IPR Helpdesk Fact Sheet IP specificities in research for the benefit of SMEs June 2015 1 Introduction... 1 1. Actions for the benefit of SMEs... 2 1.1 Research for SMEs... 2 1.2 Research for SME-Associations...

More information

(3) How does one obtain patent protection?

(3) How does one obtain patent protection? Patenting in Kenya (1) Introduction A patent gives the owner the exclusive rights to prevent others from manufacturing, using or selling the protected invention in a given country. A patent is a legally

More information

CHEMISTRY AND PHARMACEUTICALS PATENT ATTORNEYS TRADE MARK ATTORNEYS

CHEMISTRY AND PHARMACEUTICALS PATENT ATTORNEYS TRADE MARK ATTORNEYS CHEMISTRY AND PHARMACEUTICALS PATENT ATTORNEYS TRADE MARK ATTORNEYS INDEPENDENT THINKING. COLLECTIVE EXCELLENCE. Your intellectual property assets are of great value to you. To help you to secure, protect

More information

PATENT AND UTILITY MODELS

PATENT AND UTILITY MODELS PATENT AND UTILITY MODELS T EN T PA MAKERERE UNIVERSITY DIRECTORATE OF RESEARCH AND GRADUATE TRAINING PATENTS T N E PAT What is a patent? It is an exclusive right granted for an invention. The invention

More information

1. Protecting the work and expressing the potential of our clients' companies

1. Protecting the work and expressing the potential of our clients' companies Turin, December, 2012 PRESS FOLDER 1. Protecting the work and expressing the potential of our clients' companies 2. Over a century of solid experience and steady growth 3. A network of excellence 4. Leadership

More information

Statement by the BIAC Committee on Technology and Industry on THE IMPACT OF INTELLECTUAL PROPERTY PROTECTION ON INNOVATION AND TECHNOLOGY DEVELOPMENT

Statement by the BIAC Committee on Technology and Industry on THE IMPACT OF INTELLECTUAL PROPERTY PROTECTION ON INNOVATION AND TECHNOLOGY DEVELOPMENT Business and Industry Advisory Committee to the OECD OECD Comité Consultatif Economique et Industriel Auprès de l l OCDE Statement by the BIAC Committee on Technology and Industry on THE IMPACT OF INTELLECTUAL

More information

Patent Filing Strategy in Hong Kong

Patent Filing Strategy in Hong Kong Patent Filing Strategy in Hong Kong 2 August 2014 By Dr. Law Kam Wah (852) 93074287 Kam Wah Law Partner Kam Law Partner Squire Patton Boggs 29 th Floor, Edinburgh Tower, 15 Queen s Road Central, Central,

More information

UNIVERSITIES AND TECHNOLOGY TRANSFER PATENT ATTORNEYS TRADE MARK ATTORNEYS

UNIVERSITIES AND TECHNOLOGY TRANSFER PATENT ATTORNEYS TRADE MARK ATTORNEYS UNIVERSITIES AND TECHNOLOGY TRANSFER PATENT ATTORNEYS TRADE MARK ATTORNEYS INDEPENDENT THINKING. COLLECTIVE EXCELLENCE. Your intellectual property assets are of great value to you. To help you to secure,

More information

5/30/2018. Prof. Steven S. Saliterman Department of Biomedical Engineering, University of Minnesota

5/30/2018. Prof. Steven S. Saliterman Department of Biomedical Engineering, University of Minnesota Department of Biomedical Engineering, University of Minnesota http://saliterman.umn.edu/ Protect technology/brand/investment. Obtain financing. Provide an asset to increase the value of a company. Establish

More information

Practical Strategies for Managing Patent Rights for Biotechnology and Medical Device Companies

Practical Strategies for Managing Patent Rights for Biotechnology and Medical Device Companies Practical Strategies for Managing Patent Rights for Biotechnology and Medical Device Companies Timothy A. Worrall, Ph.D. Partner Dorsey & Whitney LLP Brad J. Hattenbach Of Counsel Dorsey & Whitney LLP

More information

ACCOUNTING TREATMENT OF INTELLECTUAL PROPERTY IN THE PHARMACEUTICAL INDUSTRY

ACCOUNTING TREATMENT OF INTELLECTUAL PROPERTY IN THE PHARMACEUTICAL INDUSTRY Trakia Journal of Sciences, Vol. 9, No 4, pp 63-68, 2011 Copyright 2011 Trakia University Available online at: http://www.uni-sz.bg ISSN 1313-7069 (print) ISSN 1313-3551 (online) Original Contribution

More information

Identifying and Managing Joint Inventions

Identifying and Managing Joint Inventions Page 1, is a licensing manager at the Wisconsin Alumni Research Foundation in Madison, Wisconsin. Introduction Joint inventorship is defined by patent law and occurs when the outcome of a collaborative

More information

Guidelines for Facilitating the Use of Research Tool Patents in the Life Sciences. March 1, 2007 Council for Science and Technology Policy

Guidelines for Facilitating the Use of Research Tool Patents in the Life Sciences. March 1, 2007 Council for Science and Technology Policy Guidelines for Facilitating the Use of Research Tool Patents in the Life Sciences March 1, 2007 Council for Science and Technology Policy 1. Introduction (1) In the domains of medicine and biotechnology,

More information

JPO s Status report. February 2016 JAPAN PATENT OFFICE

JPO s Status report. February 2016 JAPAN PATENT OFFICE JPO s Status report February 2016 JAPAN PATENT OFFICE The Number of Patent Applications and PCT International Applications The number of Patent Applications and Requests for Examination In Examination

More information

Patents An Introduction for Owners

Patents An Introduction for Owners Patents An Introduction for Owners Outline Review of Patents What is a Patent? Claims: The Most Important Part of a Patent! Getting a Patent Preparing Invention Disclosures Getting Inventorship Right Consolidating

More information

The Role of Malaysian Patent Attorneys in Innovation and Transfer of Technology

The Role of Malaysian Patent Attorneys in Innovation and Transfer of Technology The Role of Malaysian Patent Attorneys in Innovation and Transfer of Technology Serene Lim Soon Kheng Yusarn Audrey IP Services Sdn Bhd Table of Content: Cycle of Innovation Role of Patent Agent (Overview)

More information

Case Study HYDRO-COAT: Duly protecting research project results

Case Study HYDRO-COAT: Duly protecting research project results European IPR Helpdesk Case Study HYDRO-COAT: Duly protecting research project results September 2012 Company details Name: Politecnico di Milano POLIMI Business sector: Mining Technology 1. Background

More information

Introduction to Intellectual Property

Introduction to Intellectual Property Introduction to Intellectual Property October 20, 2015 Matthew DeSanto Assistant to Mindy Bickel, NYC Engagement Manager United States Patent and Trademark Office Outline Types of Intellectual Property

More information

Essay No. 1 ~ WHAT CAN YOU DO WITH A NEW IDEA? Discovery, invention, creation: what do these terms mean, and what does it mean to invent something?

Essay No. 1 ~ WHAT CAN YOU DO WITH A NEW IDEA? Discovery, invention, creation: what do these terms mean, and what does it mean to invent something? Essay No. 1 ~ WHAT CAN YOU DO WITH A NEW IDEA? Discovery, invention, creation: what do these terms mean, and what does it mean to invent something? Introduction This article 1 explores the nature of ideas

More information

Getting Started. This Lecture

Getting Started. This Lecture Getting Started Entrepreneurship (MGT-271) Lecture 9-11 This Lecture Intellectual Property Rights Forms of intellectual property Patent, its types and steps to obtaining patent Potential financing sources

More information

Strategic Patent Management: An Introduction

Strategic Patent Management: An Introduction Memoranda on legal and business issues and concerns for multiple and business communities Strategic Patent Management: An Introduction 1 Rajah & Tann 4 Battery Road #26-01 Bank of China Building Singapore

More information

Intellectual Property

Intellectual Property What is Intellectual Property? Intellectual Property Introduction to patenting and technology protection Jim Baker, Ph.D. Registered Patent Agent Director Office of Intellectual property can be defined

More information

COLLABORATIVE R&D & IP ISSUES IN TECHNOLOGY TRANSFER IN UNIVERSITY SYSTEM

COLLABORATIVE R&D & IP ISSUES IN TECHNOLOGY TRANSFER IN UNIVERSITY SYSTEM COLLABORATIVE R&D & IP ISSUES IN TECHNOLOGY TRANSFER IN UNIVERSITY SYSTEM Avinash Kumar Addl. Dir (IPR) DRDO HQ, DRDO Bhawan, Rajaji Marg New Delhi- 100 011 avinash@hqr.drdo.in IPR Group-DRDO Our Activities

More information

Patent protection of inventions

Patent protection of inventions Patent protection of inventions Prof. Dr. Ing. Stefan Stefanov Dr. Ing. Sanel Purgić Technical University Sofia, Faculty of German Engineering Education and Industrial Management (FDIBA) Jahorina, December

More information

Topic 3 - Chapter II.B Primary consideration before drafting a patent application. Emmanuel E. Jelsch European Patent Attorney

Topic 3 - Chapter II.B Primary consideration before drafting a patent application. Emmanuel E. Jelsch European Patent Attorney Topic 3 - Chapter II.B Primary consideration before drafting a patent application Emmanuel E. Jelsch European Patent Attorney Table of Contents Detailed Overview of Patents Patent Laws Patents Overview

More information

IS STANDARDIZATION FOR AUTONOMOUS CARS AROUND THE CORNER? By Shervin Pishevar

IS STANDARDIZATION FOR AUTONOMOUS CARS AROUND THE CORNER? By Shervin Pishevar IS STANDARDIZATION FOR AUTONOMOUS CARS AROUND THE CORNER? By Shervin Pishevar Given the recent focus on self-driving cars, it is only a matter of time before the industry begins to consider setting technical

More information

Research Valorization Process.

Research Valorization Process. Research Valorization Process. An overview of the key points of Research Valorization Process and Intellectual Property Rights to protect the results and add value in research (patents, trade secrets,

More information

Trans-Pacific Partnership Lost Important IP Provisions

Trans-Pacific Partnership Lost Important IP Provisions Portfolio Media. Inc. 111 West 19 th Street, 5th Floor New York, NY 10011 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Trans-Pacific Partnership Lost Important

More information

_ To: The Office of the Controller General of Patents, Designs & Trade Marks Bhoudhik Sampada Bhavan, Antop Hill, S. M. Road, Mumbai

_ To: The Office of the Controller General of Patents, Designs & Trade Marks Bhoudhik Sampada Bhavan, Antop Hill, S. M. Road, Mumbai Philips Intellectual Property & Standards M Far, Manyata Tech Park, Manyata Nagar, Nagavara, Hebbal, Bangalore 560 045 Subject: Comments on draft guidelines for computer related inventions Date: 2013-07-26

More information

China 10-Point Patent Checklist: Integrating patents into an overall business strategy for a Western manufacturing entity in China

China 10-Point Patent Checklist: Integrating patents into an overall business strategy for a Western manufacturing entity in China Original Article China 10-Point Patent Checklist: Integrating patents into an overall business strategy for a Western manufacturing entity in China Received (in revised form): 7 th November 2008 Catherine

More information

Business Partnerships in Agriculture and Biotechnology that Advance Early-State Technology

Business Partnerships in Agriculture and Biotechnology that Advance Early-State Technology CHAPTER 12.7 Business Partnerships in Agriculture and Biotechnology that Advance Early-State Technology MARTHA DUNN, Licensing Manager, Syngenta Biotechnology, Inc., U.S.A. BRETT LUND, Licensing Manager,

More information

Case Study The ABC of IP strategy for a small R&D company

Case Study The ABC of IP strategy for a small R&D company European IPR Helpdesk Case Study The ABC of IP strategy for a small R&D company August 2017 TNtech, s.r.o. R&D company www.tntech.eu 1. Background The transition from conventional to renewable energy sources

More information

World Class Intellectual Property Services

World Class Intellectual Property Services World Class Intellectual Property Services Contents Exceptional service in Intellectual Property 1 A world class service 2 Patents 4 Trademarks 8 Designs 10 Our attorneys 12 International networks and

More information

eskbook Emerging Life Sciences Companies second edition Chapter 8 Checklist for Planning and Conducting an Effective FTO Search

eskbook Emerging Life Sciences Companies second edition Chapter 8 Checklist for Planning and Conducting an Effective FTO Search eskbook Emerging Life Sciences Companies second edition Chapter 8 Checklist for Planning and Conducting an Effective FTO Search Chapter 8 CHECKLIST FOR PLANNING AND CONDUCTING AN EFFECTIVE FTO SEARCH The

More information

An investment in a patent for your invention could be the best investment you will ever

An investment in a patent for your invention could be the best investment you will ever San Francisco Reno Washington D.C. Beijing, China PATENT TRADEMARK FUNDING BROKER INVENTOR HELP Toll Free: 1-888-982-2927 San Francisco: 415-515-3005 Facsimile: (775) 402-1238 Website: www.bayareaip.com

More information

Transferring UCLA discoveries to the public. Kathryn Atchison, DDS, MPH Vice Provost, Associate Vice Chancellor for Research

Transferring UCLA discoveries to the public. Kathryn Atchison, DDS, MPH Vice Provost, Associate Vice Chancellor for Research Transferring UCLA discoveries to the public. Kathryn Atchison, DDS, MPH Vice Provost, Associate Vice Chancellor for Research UCLA Research: A Winning Environment $811M+ in research awards for FY2006 3,300

More information

Loyola University Maryland Provisional Policies and Procedures for Intellectual Property, Copyrights, and Patents

Loyola University Maryland Provisional Policies and Procedures for Intellectual Property, Copyrights, and Patents Loyola University Maryland Provisional Policies and Procedures for Intellectual Property, Copyrights, and Patents Approved by Loyola Conference on May 2, 2006 Introduction In the course of fulfilling the

More information

IIPTA. Role of Intellectual Property Rights in Biotechnology Industry. Launch a Career. Be Awesome

IIPTA. Role of Intellectual Property Rights in Biotechnology Industry.  Launch a Career. Be Awesome IIPTA Launch a Career. Be Awesome www.iipta.com Role of Intellectual Property Rights in Biotechnology Industry INTRODUCTION TO THE WORKSHOP Intellectual Property Rights is a tool to protect innovation

More information

Evaluating a Report of Invention & Licensing. Technology Development Boot Camp Peter Liao March 25, 2013

Evaluating a Report of Invention & Licensing. Technology Development Boot Camp Peter Liao March 25, 2013 Evaluating a Report of Invention & Licensing Technology Development Boot Camp Peter Liao March 25, 2013 Technology Transfer at UNC Is. The process of forming partnerships with industry for the purpose

More information

Engaging Industry Partners

Engaging Industry Partners Engaging Industry Partners What is Easy Access IP? Easy Access IP originated from University of Glasgow and is being used by a number of Universities around the world. All Intellectual Property (IP) made

More information

A POLICY in REGARDS to INTELLECTUAL PROPERTY. OCTOBER UNIVERSITY for MODERN SCIENCES and ARTS (MSA)

A POLICY in REGARDS to INTELLECTUAL PROPERTY. OCTOBER UNIVERSITY for MODERN SCIENCES and ARTS (MSA) A POLICY in REGARDS to INTELLECTUAL PROPERTY OCTOBER UNIVERSITY for MODERN SCIENCES and ARTS (MSA) OBJECTIVE: The objective of October University for Modern Sciences and Arts (MSA) Intellectual Property

More information

What is Intellectual Property?

What is Intellectual Property? What is Intellectual Property? Watch: Courtesy Swatch AG What is Intellectual Property? Table of Contents Page What is Intellectual Property? 2 What is a Patent? 5 What is a Trademark? 8 What is an Industrial

More information

Prof. Steven S. Saliterman. Department of Biomedical Engineering, University of Minnesota

Prof. Steven S. Saliterman. Department of Biomedical Engineering, University of Minnesota Department of Biomedical Engineering, University of Minnesota http://saliterman.umn.edu/ Protect technology/brand/investment. Obtain financing. Provide an asset to increase the value of a company. Establish

More information

Manmin. IP & LAW Firm

Manmin. IP & LAW Firm Manmin IP & LAW Firm Who are you thinking of putting on your valuable IP rights? Reliable service in Intellectual Property To success in the global market, it is necessary to value your IP rights correctly

More information

EPO Latest Developments June Mike Nicholls

EPO Latest Developments June Mike Nicholls EPO Latest Developments June 2010 Mike Nicholls mnicholls@jakemp.com Speaker Mike Nicholls partner MA (Oxford University) Physics (1985) Patent attorney since 1989 Patents electronics, software, mechanical

More information

Where to File Patent Application Yumiko Hamano IP Consultant - IP Commercialization Partner, ET Cube International

Where to File Patent Application Yumiko Hamano IP Consultant - IP Commercialization Partner, ET Cube International Where to File Patent Application Yumiko Hamano IP Consultant - IP Commercialization Partner, ET Cube International Patent A right granted by a state to the owner of an invention, to exclude others from

More information

International Intellectual Property Practices

International Intellectual Property Practices International Intellectual Property Practices FOR: Hussein Akhavannik حسين اخوان نيك Managing Partner International IP Group, LLC Web: www.intlip.com Email: akhavannik@intlip.com Mobile: 0912-817-2669

More information

Keywords: Synairgen plc, Southampton, collaboration, spin-out, asthma, COPD

Keywords: Synairgen plc, Southampton, collaboration, spin-out, asthma, COPD Professor Stephen Holgate is a member of the Infection, Inflammation and Repair Division in the University of Southampton School of Medicine. He is a co-founder and non-executive director of Synairgen

More information

From invention to market with PatronUS ip

From invention to market with PatronUS ip From invention to market with PatronUS ip From invention to market with PatronUS ip no business should take risks in the field of patent and trade mark law. right from the start, trademarks, inventions,

More information

Foreign Filing Strategies - Considerations in Protecting Your Patents Globally

Foreign Filing Strategies - Considerations in Protecting Your Patents Globally Foreign Filing Strategies - Considerations in Protecting Your Patents Globally Gwilym Attwell Fish & Richardson Patent Webinar Series February 26, 2014 #fishwebinar Foreign filing Considerations Where

More information

Key Features of Patent and Utility Models Protection

Key Features of Patent and Utility Models Protection Key Features of Patent and Utility Models Protection Regional Seminar on the Legislative, Economic and Policy Aspects of the Utility Models Protection System, Kuala Lumpur September 3 and 4, 2012 Standard

More information

Effective Intellectual Property Management

Effective Intellectual Property Management Effective Intellectual Property Management Tom Smerdon Director, Licensing and New Business Development tom.smerdon@cu.edu NSF PV Workshop Golden, CO May 6, 2010 Knowledge Innovation Technology University

More information

Introduction to Intellectual Property

Introduction to Intellectual Property Introduction to Intellectual Property Jeremy Nelson, PhD Licensing Manager & Patent Agent Technology Transfer Office CSURF What is intellectual property? Any product of the human intellect that is unique,

More information

PATENTING. T Technology Management in the Telecommunications Industry Aalto University

PATENTING. T Technology Management in the Telecommunications Industry Aalto University PATENTING T-109.5410 Technology Management in the Telecommunications Industry Aalto University 15.10.2013 PhD Yrjö Raivio Patent Examiner National Board of Patents and Registration of Finland (PRH) yrjo.raivio@prh.fi

More information

Managing IP Assets Throughout the. Patent Lifecycle

Managing IP Assets Throughout the. Patent Lifecycle Managing IP Assets Throughout the Patent Lifecycle You or your clients have invested heavily in developing and acquiring intellectual property. In some cases you may have been threatened by others with

More information