IP, Patents and Commercial considerations in drug discovery

what are the 2 types of company assets?

• tangible (can touch them)

• intangible (cannot touch them)

give examples of tangible company assets

• land

• buildings

• plants

• staff

give examples of intangible company assets

• ideas/knowledge

• inventions/patents

• trade marks

• corporate image

• skills

what type of company asset is intellectual property (IP)?

intangible

what are the different types of intellectual property?

• confidential information

• patents

• copyright

• trade marks

• designs

what does copyright protect?

original artwork

what do trade marks protect?

anything that can give indication of brand origin

what do designs protect?

aesthetic look of product

what is a patent?

• technical invention

• lasts for up to 20 years from filing date

• national right → have to apply for patent in every country that you want it to exist in

• agreement between a state and the inventor → in return for publication of the invention in full, the inventor is granted a legal right to exclude others from making, selling or using the invention

what is the value of publishing an invention under a patent?

• everyone can freely use the invention once the patent expires

• stimulates innovation e.g. others can try to improve product

what is the criteria for a patent?

• novel

• useful

• inventive

• adequately described (transparency in publishing)

define novelty as a criteria of patentability

no public disclosure by any means prior to the date of application

why is the patent filing date so important?

• this date is what novelty is assessed against i.e. no disclosure prior to this date

• patent expires up to 20 years from filing date

describe invention as a criteria of patentability

• you cannot patent something that is an obvious adaption of what is already known

• concept is subjective and judged from the perspective of a person skilled in the art

• golden rule: a problem solved is often a patent opportunity

what is the issue surrounding a rejected patent?

application is open for public view → no longer novel because it has been disclosed to public :. if you wanted to improve on it and refile, it is no longer novel

define prior art

any evidence that shows a particular invention is already known before the patent application is filed

what are the 2 parts to a patent?

• claims

• description

describe claims as an element of a patent

defines the scope of the subject matter which can prevent or control others using

• tells you what is actually protected :. very important

• single sentence defining the invention

define description as an element of a patent

supports the claims

• all info that supports claims e.g. how you make it, variants, background info etc.

looking at the claims element of a patent, what kind of scope is ideal?

broad claims then only narrow down to what you have to

• narrow claims allows competing companies to make changes to 1 element get around the patent

at what point in the patent application process do you apply for patents in foreign countries?

after 12 months foreign filing occurs

• decide all the countries you want to go into

when does the application become prior art?

at the point of publishing → approximately 18 months after filing

how long does it take approximately to get patents granted?

3 yrs

what should be considered when filing a patent strategy?

• what is the invention and which are the critical parts? → to include in claim

• which features are known and how extensive is the prior art?

• how broadly should the invention be claimed?

• how much information should be disclosed in the application? → in case of rejection

• when must the patent application be filed

• where is patent protection needed? e.g. designs, copyright, trademark etc

what are some of the indicators which show that you product is innovative?

• unexpected results

• failed attempts to solve a problem

• unrecognised problem

• commercial success