Patricia PowerJanuary 20, 2005

INTELLECTUAL PROPERTY

& PATENTS

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

WHAT IS A PATENT?

Country Specific

Right to Exclude

Time Limited

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)

WHAT IS PATENTABLE?

• New

• Inventive

• Useful

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

NOVELTY

• Ensure not published by others

• Conduct internet search

• Use free databases

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

CANADA

EUROPE

JAPAN

AUSTRALIA

CHINA

USA

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

ALLOWANCE

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

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