10 Points on Patents and Tech Transfer

1. Tech transfer has its own patent strategy.  Often there will be a single opportunity to file a patent application and publication by the inventors will happen soon after filing. Usually that means that the application will be drafted with broad claims, and there may be no subsequent filings. This is different from the situation with research companies where there are a series of applications filed as research progresses, some of which may be directed to minor developments.

2. For a tech transfer office whether or not to file a patent application is a complex and potentially costly decision.  Thought needs to be given to the likelihood of successfully obtaining useful patent protection and also to whether there are complications on the case that will lead to future difficulties and increased costs. Patent Attorney advice should be taken on the likelihood of obtaining a patent with reasonably broad claims. All possible problems with the patent application should be considered, but a good rule of thumb is that strong inventive step arguments should be available for use in examination.

3. The inventors will initially need to provide the tech transfer office with the following information:

  • the scientific finding and their view of what the contribution is in comparison to what is known in the relevant area
  • all the different ways in which the scientific finding could be used
  • what they believe the closest relevant published documents are, including their own publications and, if applicable, their own previous patent applications
  • details of everyone who contributed to the invention, which of these are believed to be inventors and why
  • any other information that is potentially relevant to use or ownership of the invention, such as contractual obligations concerning patent filings, use of confidential information or use of materials provided under agreements
  • a list of companies that may be interested in licensing or buying the technology.

4. Consideration needs to be given to the work the scientists are planning to do in the priority year, and whether that needs to be foreshadowed in any way in the patent application.  In particular thought should be given as to whether there need to be claims in the patent application that reflect the work that will be done.

5. It is important to consider whether there are likely to be future patent filings on downstream inventions from same scientists.  The patent application will be prior art for such future patent filings, and so if there are likely to be future filings the patent application needs to be written in a way that minimises its prior art impact on those filings.  Further the overall strategy will also be affected by whether the scientists are planning to publish their work in the near future.  The prior art effect of such a publication may make it difficult or impossible to obtain patent protection for any subsequent developments.

6. Ultimately the patent application is required to have claims that are arguably valid and which cover subject matter capable of commercial exploitation.  Ideally such claims will be broad and be capable of being enforced.  Certain claim types, such as screening claims, only cover activities that can be done privately (for example in a research lab) and so infringement can be difficult to detect.  Product claims tend to be easier to enforce.  When drafting the claims thought should be given to the main interests of commercial parties who may licence or buy the technology.

7. In a tech transfer situation, where there is less control over the scientists, grace periods may have to be used to nullify the prior art effect of any public disclosure they have made. Grace periods are available in many territories, including the US, normally the most important territory. However if grace periods are going to be utilised then care has to be taken to ensure that all conditions are met for use of the grace period.  For example in certain territories the PCT route is no longer available if the grace period is going to be used.  Use of grace periods will however increase costs.

8. The patent application should be filed as soon as possible to obtain the earliest priority date and to minimise the possibility of a public disclosure of the invention by the scientists.  Preferably the patent application should be filed before any discussions with potential collaborators and commercial parties occur, even though these discussions will be confidential.  Discussion of the invention with third party organisations before filing a patent application can lead to claims of inventorship from scientists from such organisations.

9. Patent protection is expensive and the costs escalate as the case progresses.  The end of the priority year (at 12 months) and the end of the international phase (at 30 months) are appropriate time points to consider whether or not the application should be abandoned.  Proceeding beyond the international phase can be expensive and normally that would only be done if a commercial party had taken an interest.

10. Patent Attorneys can be expensive.  However the costs of working with Patent Attorneys can often be minimised by making sure that they are used efficiently.  Patent Attorneys will usually charge based on the amount of time they spend on a case and therefore a tech transfer office needs to control this by ensuring they are not given tasks that could be done by the tech transfer office or by the scientists.  Often it is best not to let the scientists contact the Patent Attorneys directly.  Instead all communications should go via the tech transfer office to ensure that the Patent Attorneys are only used for tasks none of the other parties can do.

The above points are based on a longer post which can be accessed here.

You may also wish to see related articles Patent Advice for Research Companies and Biotech Patents in Europe. Our article on the ethics of tech transfer published on the IP Finance blog can be found here.

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