These tips are probably more applicable to a university tech transfer situation rather than a research company.
- Internet searches using search engines (e.g. Google) and PubMed and can be effective for identifying relevant prior art for many areas of biotech. Such searches will cost little and can quickly give a good picture of the prior art.
- As a preliminary point it may be worth assessing whether the invention is ground-breaking or whether it a development of earlier work. Inventions which represent ‘follow-on’ work can of course be valuable, but may be more likely to be objected to as being obvious. Patent application based on follow-on work might have narrow claims.
- Some analysis of commercial worth is usually essential. This will be an important factor in choosing whether or not to file. Commercial worth can of course be complex to assess. It can be based on the value of sales of the product or factors such as whether the patent application will be an important part of a collaboration agreement.
- Make sure you are aware of all possible inventors and all parties that may have rights in the application. All contributions from external people should be looked at carefully as well as confidential information and materials they might have provided.
- Inventive step (obviousness) is often the most important issue for patentability. All surprising advantages and unexpected effects should be identified and assessed.
- At many patent offices biotech Examiners are very good at spotting what is obvious. Inventions that arise from routine experimentation will be challenged. Thus one must take into account variations of the invention that would be obvious in the relevant field, such as combining the drug with other agents for the same conditions or delivering in the same way.
- The initial view of what the invention is may change once a patent attorney provides comments on patentability. This can help focus the scientists’ minds on what the actual contribution is. Scientists can be too optimistic or too negative about their own work, and will often find it difficult to assess patentability.
- It can be useful to probe the scientists for their reasons for doing the work that they did. This can provide insights which might not be easy to see when simply comparing the invention to the prior art, and might help in the way the invention is presented in the patent application.
- Ascertain the relationship between the invention and all relevant work being done by the group. That will assist the understanding of how the invention fits into the research as a whole, as well as providing information about work to be done in the priority year and work which may lead to future filings.
- Bear in mind that obscure publications or publications with unsubstantiated disclosure can still be problematic prior art, though such papers might be dismissed by the scientists.