4th regional plant biotechnology forum – 20 october 2011 commercialisation of intellectual...

4TH REGIONAL PLANT BIOTECHNOLOGY FORUM – 20 October 2011

Commercialisation of Intellectual Property

TIA IP UNITChyreene Truluck

Intellectual Property Analyst

Transgenic plant

Transform plant and Select and screen transformed plants

Insert into vector

Isolate and amplify gene

1. http://www.pcrstation.com/pcr-primer/2. http://www.pnas.org/content/97/20/11102.full3. http://home.cc.umanitoba.ca/~umdemars/PLNT4600/mini3/mini3.1%20(copy).html4. http://users.comcen.com.au/~biodynamic/pages/what_is_it.html5. http://ukpmc.ac.uk/articles/PMC1178006. http://environmentalwatchman.blogspot.com/2010_09_01_archive.html

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EXAMPLE: TRANSGENIC MULTIVITAMIN CORN

http://www.pcrstation.com/pcr-primer/

http://www.pnas.org/content/97/20/11102.full

http://home.cc.umanitoba.ca/~umdemars/PLNT4600/mini3/mini3.1%20(copy).html

http://users.comcen.com.au/~biodynamic/pages/what_is_it.html

http://ukpmc.ac.uk/articles/PMC117800

http://environmentalwatchman.blogspot.com/2010_09_01_archive.html

WHAT IS COMMERCIALISATION?

USING IP (YOUR OWN OR SOMEONE ELSE’S) TO DERIVE VALUE

COMMERCIALISATION STRATEGY

Know the market

• Which market is it?• What is your best route to market?• How easy is it to enter?• What are the barriers to entry to market?• Who are the major players in the market?

ROUTE TO MARKET

IP is an asset which you

can:

Commercialise yourself

Sale (Assignment)

Lease (License)

Keep rights to yourself

Produce product yourself

Sell the product yourself OR

Use Distributors


can:


Sale (Assignment)

Lease (License)

COMMON COMMERCIALISATION VEHICLES

Assign wholly or part of your IP

rights

The assignee of the IP will be the owner of

the IP

COMMON COMMERCIALISATION VEHICLES


can:


Sale (Assignment)

Lease (License)

Ownership is not transferred to the licensee

Owner refrains from suing for

limited activities

Non-exclusive license

Sole license

Exclusive license

INTELLECTUAL PROPERTY STRATEGY

What does this mean?

• Decide on appropriate type of protection• Decide when to protect• Decide on territory in which the IP should be protected• Consider the cost of protecting the IP

An IP strategy requires you to think about the process of commercialisation and to determine how and why you want to

protect your IP

Test for IP strategy: Will the strategy enable the technology to have a competitive advantage?

Will this advantage be sustainable?

DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT

Patents:

• Provided for a limited time period• Initial patent may expire but additional patents may be

filed for improvements• Plan to licence? May be crucial to attract licensees• If IP is still in development phase: file provisional patent

application or PCT application

Transgenic plant


Insert into vector


Patent for transgenic plant; Plant breeder’s

right for new plant variety; Trademark for

variety name

Patent for process; Know how for process; Design registration and

Trademark for equipment e.g. Gene

gun; Copyright for manuals

Patent for vector; Trade secret for vector;

Trademark for vector

Patent for primers, gene sequence, method;

Copyright for sequence representations


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Copyright for gene sequence results, lab book, theses, publications, protocols








Know-how and trade secret:

• Can provide an advantage over competing products or services• Inexpensive form of protection…however the value can be lost if the

secret or confidentiality is lost• Use of this method of protection is often very dependant on the field of

the technology• Used when an invention is difficult to reverse engineer• Useful before filing patent application, especially where to do so is

premature• If you plan to license know-how may need to provide ongoing support


Transgenic plant


Insert into vector




variety name









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Trademarks:

• People like to rely on a trusted brand• Brand and protect brand early so when other forms of IP expire

customers are familiar with your name sustain commercial activity• Plan to commercialise on own at first and then sell company at later

stage when its worth more? it is important to build brand and trademark may be vital


Transgenic plant


Insert into vector




variety name









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Copyright:

• Inexpensive (Automatic)• Only way to protect computer programs as such in South Africa


Transgenic plant


Insert into vector




variety name









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DECIDING ON TERRITORY IN WHICH THE IP SHOULD BE PROTECTED AND CONSIDERATIONS OF THE COST OF PROTECTING THE IP

Weigh up cost of protecting against value of IP and company (actual and potential value)

Market File for IP protection in these territories

When deciding on territory for protection The market is the most important factor

IP strategy should take into account changing value of IP over time• Patent close to expiry not as valuable as at outset• Prior to filing patent applications: know-how and copyright are your biggest asset

Transgenic plant


Insert into vector




variety name









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HOW DO YOU OBTAIN VALUE FROM YOUR IP?

Keep rightsTransfer rights(Assignment)

Refrain from exercising rights

(Licence)Leverage IP rights…

LEVERAGING IP RIGHTS

Obtain a cross licence for someone else’s technology in exchange for your own

Attract further investment

Attract commercialisation partners

The IP strategy must be aligned with the commercialisation strategy

Thank You

Questions???

4th regional plant biotechnology forum – 20 october 2011 commercialisation of intellectual...

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