Submit Search
Upload
Foley Hoag Patent Basics
•
0 likes
•
114 views
S
StanleyHe7
Follow
Basic concepts about patenting
Read less
Read more
Business
Report
Share
Report
Share
1 of 26
Download now
Download to read offline
Recommended
Patent Law in 2014: Act fast or get left behind
Patent Law in 2014: Act fast or get left behind
steve_ritchey
Commercialization and Patent Infringement
Commercialization and Patent Infringement
Knobbe Martens - Intellectual Property Law
What You Need to Know About Patent Filing and Litigation in Europe
What You Need to Know About Patent Filing and Litigation in Europe
Knobbe Martens - Intellectual Property Law
The patent act
The patent act
Saurav Ghoshal
Design Patents
Design Patents
Knobbe Martens - Intellectual Property Law
Information Technology/Biotechnology
Information Technology/Biotechnology
Knobbe Martens - Intellectual Property Law
Doctrine of equivalants
Doctrine of equivalants
Altacit Global
Intellectual Property Considerations During Product Development
Intellectual Property Considerations During Product Development
Knobbe Martens - Intellectual Property Law
Recommended
Patent Law in 2014: Act fast or get left behind
Patent Law in 2014: Act fast or get left behind
steve_ritchey
Commercialization and Patent Infringement
Commercialization and Patent Infringement
Knobbe Martens - Intellectual Property Law
What You Need to Know About Patent Filing and Litigation in Europe
What You Need to Know About Patent Filing and Litigation in Europe
Knobbe Martens - Intellectual Property Law
The patent act
The patent act
Saurav Ghoshal
Design Patents
Design Patents
Knobbe Martens - Intellectual Property Law
Information Technology/Biotechnology
Information Technology/Biotechnology
Knobbe Martens - Intellectual Property Law
Doctrine of equivalants
Doctrine of equivalants
Altacit Global
Intellectual Property Considerations During Product Development
Intellectual Property Considerations During Product Development
Knobbe Martens - Intellectual Property Law
Patent Remedies
Patent Remedies
BananaIP Counsels
Want to Apply For a Patent in the USA? Patent Process Overview
Want to Apply For a Patent in the USA? Patent Process Overview
Patent ServicesUSA
The Meaning of Patent Infringement and Patent Litigation
The Meaning of Patent Infringement and Patent Litigation
Knobbe Martens - Intellectual Property Law
Intellectual Property Issues for Consideration When Having a New Idea
Intellectual Property Issues for Consideration When Having a New Idea
Demetris Hadjisofocli
Corporate-Sponsored Research Agreements with Universities
Corporate-Sponsored Research Agreements with Universities
Knobbe Martens - Intellectual Property Law
Protecting and Enforcing Your High Technology Intellectual Property
Protecting and Enforcing Your High Technology Intellectual Property
Knobbe Martens - Intellectual Property Law
How to Avoid Losing Patent Rights
How to Avoid Losing Patent Rights
Knobbe Martens - Intellectual Property Law
Introduction to IP: Basics of Patents, Trademarks, & Trade Secrets
Introduction to IP: Basics of Patents, Trademarks, & Trade Secrets
Knobbe Martens - Intellectual Property Law
Navigating the Patent Minefield
Navigating the Patent Minefield
Knobbe Martens - Intellectual Property Law
Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents
Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents
Knobbe Martens - Intellectual Property Law
Patent Law 101
Patent Law 101
steve_ritchey
Oral+histology+on+the+web+br+mac pherson+%26+jg+tieman+anatomy+
Oral+histology+on+the+web+br+mac pherson+%26+jg+tieman+anatomy+
shabeel pn
Intellectual Property for Engineers
Intellectual Property for Engineers
Knobbe Martens - Intellectual Property Law
What is IP, Patents in Pharma Industry
What is IP, Patents in Pharma Industry
Anthony Melvin Crasto Ph.D
Patent damages
Patent damages
Altacit Global
Patent ppt
Patent ppt
Prem Patil
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Knobbe Martens - Intellectual Property Law
How to File for a Patent
How to File for a Patent
Knobbe Martens - Intellectual Property Law
09-The U.S. Patent Process: Conception to Filing
09-The U.S. Patent Process: Conception to Filing
MacMillan, Sobanski and Todd, LLC.
Best Practices for Employee, Contractor and Consulting Agreements
Best Practices for Employee, Contractor and Consulting Agreements
Knobbe Martens - Intellectual Property Law
Patentable and Non Patentable Inventions
Patentable and Non Patentable Inventions
egoistic_ek
Patent act
Patent act
Deepak25
More Related Content
What's hot
Patent Remedies
Patent Remedies
BananaIP Counsels
Want to Apply For a Patent in the USA? Patent Process Overview
Want to Apply For a Patent in the USA? Patent Process Overview
Patent ServicesUSA
The Meaning of Patent Infringement and Patent Litigation
The Meaning of Patent Infringement and Patent Litigation
Knobbe Martens - Intellectual Property Law
Intellectual Property Issues for Consideration When Having a New Idea
Intellectual Property Issues for Consideration When Having a New Idea
Demetris Hadjisofocli
Corporate-Sponsored Research Agreements with Universities
Corporate-Sponsored Research Agreements with Universities
Knobbe Martens - Intellectual Property Law
Protecting and Enforcing Your High Technology Intellectual Property
Protecting and Enforcing Your High Technology Intellectual Property
Knobbe Martens - Intellectual Property Law
How to Avoid Losing Patent Rights
How to Avoid Losing Patent Rights
Knobbe Martens - Intellectual Property Law
Introduction to IP: Basics of Patents, Trademarks, & Trade Secrets
Introduction to IP: Basics of Patents, Trademarks, & Trade Secrets
Knobbe Martens - Intellectual Property Law
Navigating the Patent Minefield
Navigating the Patent Minefield
Knobbe Martens - Intellectual Property Law
Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents
Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents
Knobbe Martens - Intellectual Property Law
Patent Law 101
Patent Law 101
steve_ritchey
Oral+histology+on+the+web+br+mac pherson+%26+jg+tieman+anatomy+
Oral+histology+on+the+web+br+mac pherson+%26+jg+tieman+anatomy+
shabeel pn
Intellectual Property for Engineers
Intellectual Property for Engineers
Knobbe Martens - Intellectual Property Law
What is IP, Patents in Pharma Industry
What is IP, Patents in Pharma Industry
Anthony Melvin Crasto Ph.D
Patent damages
Patent damages
Altacit Global
Patent ppt
Patent ppt
Prem Patil
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Knobbe Martens - Intellectual Property Law
How to File for a Patent
How to File for a Patent
Knobbe Martens - Intellectual Property Law
09-The U.S. Patent Process: Conception to Filing
09-The U.S. Patent Process: Conception to Filing
MacMillan, Sobanski and Todd, LLC.
Best Practices for Employee, Contractor and Consulting Agreements
Best Practices for Employee, Contractor and Consulting Agreements
Knobbe Martens - Intellectual Property Law
What's hot
(20)
Patent Remedies
Patent Remedies
Want to Apply For a Patent in the USA? Patent Process Overview
Want to Apply For a Patent in the USA? Patent Process Overview
The Meaning of Patent Infringement and Patent Litigation
The Meaning of Patent Infringement and Patent Litigation
Intellectual Property Issues for Consideration When Having a New Idea
Intellectual Property Issues for Consideration When Having a New Idea
Corporate-Sponsored Research Agreements with Universities
Corporate-Sponsored Research Agreements with Universities
Protecting and Enforcing Your High Technology Intellectual Property
Protecting and Enforcing Your High Technology Intellectual Property
How to Avoid Losing Patent Rights
How to Avoid Losing Patent Rights
Introduction to IP: Basics of Patents, Trademarks, & Trade Secrets
Introduction to IP: Basics of Patents, Trademarks, & Trade Secrets
Navigating the Patent Minefield
Navigating the Patent Minefield
Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents
Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents
Patent Law 101
Patent Law 101
Oral+histology+on+the+web+br+mac pherson+%26+jg+tieman+anatomy+
Oral+histology+on+the+web+br+mac pherson+%26+jg+tieman+anatomy+
Intellectual Property for Engineers
Intellectual Property for Engineers
What is IP, Patents in Pharma Industry
What is IP, Patents in Pharma Industry
Patent damages
Patent damages
Patent ppt
Patent ppt
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
Protecting Your Intellectual Property: Cost-Saving Techniques, Legal Updates ...
How to File for a Patent
How to File for a Patent
09-The U.S. Patent Process: Conception to Filing
09-The U.S. Patent Process: Conception to Filing
Best Practices for Employee, Contractor and Consulting Agreements
Best Practices for Employee, Contractor and Consulting Agreements
Similar to Foley Hoag Patent Basics
Patentable and Non Patentable Inventions
Patentable and Non Patentable Inventions
egoistic_ek
Patent act
Patent act
Deepak25
Patents and intellectual Property Rights
Patents and intellectual Property Rights
Patel Abdul Waheed
IP for Accountants Companion launch presentation
IP for Accountants Companion launch presentation
Nicholas Weston Lawyers
New Patent System
New Patent System
Melissa Woolfrey
Intellectual Property Brochure
Intellectual Property Brochure
mcarruthers
Foundation of patent law
Foundation of patent law
Rajalingam Balakrishnan
InventHelp: How To Patent Your Invention Idea?
InventHelp: How To Patent Your Invention Idea?
SuzanneBuckley6
Patent Basics for Emerging Companies
Patent Basics for Emerging Companies
Hiatus51
Details in Patent
Details in Patent
Dr Shailendra Bhalawe
Patents
Patents
Kamma K Babu
IP Strategies for Startups
IP Strategies for Startups
Sanjay Agrawal
Patent Infringement Unveiled: Understanding the Different Flavors and How to ...
Patent Infringement Unveiled: Understanding the Different Flavors and How to ...
Invention ip
Info 442 chapt 5
Info 442 chapt 5
abdulasissheikusmael
Patent law in_u.s
Patent law in_u.s
Rahul Mishra
IP_Presentation.ppt
IP_Presentation.ppt
JoselitoJMebolos
02_Patents
02_Patents
RST ECOENERGY PVT. LTD.
Ethical & regulatory basis
Ethical & regulatory basis
20smitajadhav
IPR.pptx
IPR.pptx
VaidehiJain2
Patents Basics
Patents Basics
PhysicsUtu
Similar to Foley Hoag Patent Basics
(20)
Patentable and Non Patentable Inventions
Patentable and Non Patentable Inventions
Patent act
Patent act
Patents and intellectual Property Rights
Patents and intellectual Property Rights
IP for Accountants Companion launch presentation
IP for Accountants Companion launch presentation
New Patent System
New Patent System
Intellectual Property Brochure
Intellectual Property Brochure
Foundation of patent law
Foundation of patent law
InventHelp: How To Patent Your Invention Idea?
InventHelp: How To Patent Your Invention Idea?
Patent Basics for Emerging Companies
Patent Basics for Emerging Companies
Details in Patent
Details in Patent
Patents
Patents
IP Strategies for Startups
IP Strategies for Startups
Patent Infringement Unveiled: Understanding the Different Flavors and How to ...
Patent Infringement Unveiled: Understanding the Different Flavors and How to ...
Info 442 chapt 5
Info 442 chapt 5
Patent law in_u.s
Patent law in_u.s
IP_Presentation.ppt
IP_Presentation.ppt
02_Patents
02_Patents
Ethical & regulatory basis
Ethical & regulatory basis
IPR.pptx
IPR.pptx
Patents Basics
Patents Basics
Recently uploaded
8447779800, Low rate Call girls in Tughlakabad Delhi NCR
8447779800, Low rate Call girls in Tughlakabad Delhi NCR
ashishs7044
BEST Call Girls In Old Faridabad ✨ 9773824855 ✨ Escorts Service In Delhi Ncr,
BEST Call Girls In Old Faridabad ✨ 9773824855 ✨ Escorts Service In Delhi Ncr,
noida100girls
8447779800, Low rate Call girls in Rohini Delhi NCR
8447779800, Low rate Call girls in Rohini Delhi NCR
ashishs7044
Call Us 📲8800102216📞 Call Girls In DLF City Gurgaon
Call Us 📲8800102216📞 Call Girls In DLF City Gurgaon
callgirls2057
Progress Report - Oracle Database Analyst Summit
Progress Report - Oracle Database Analyst Summit
Holger Mueller
/:Call Girls In Indirapuram Ghaziabad ➥9990211544 Independent Best Escorts In...
/:Call Girls In Indirapuram Ghaziabad ➥9990211544 Independent Best Escorts In...
lizamodels9
Call Girls In Radisson Blu Hotel New Delhi Paschim Vihar ❤️8860477959 Escorts...
Call Girls In Radisson Blu Hotel New Delhi Paschim Vihar ❤️8860477959 Escorts...
lizamodels9
Cash Payment 9602870969 Escort Service in Udaipur Call Girls
Cash Payment 9602870969 Escort Service in Udaipur Call Girls
Apsara Of India
8447779800, Low rate Call girls in Kotla Mubarakpur Delhi NCR
8447779800, Low rate Call girls in Kotla Mubarakpur Delhi NCR
ashishs7044
Global Scenario On Sustainable and Resilient Coconut Industry by Dr. Jelfina...
Global Scenario On Sustainable and Resilient Coconut Industry by Dr. Jelfina...
ictsugar
Call Girls in DELHI Cantt, ( Call Me )-8377877756-Female Escort- In Delhi / Ncr
Call Girls in DELHI Cantt, ( Call Me )-8377877756-Female Escort- In Delhi / Ncr
dollysharma2066
Intro to BCG's Carbon Emissions Benchmark_vF.pdf
Intro to BCG's Carbon Emissions Benchmark_vF.pdf
pollardmorgan
Call Girls In Sikandarpur Gurgaon ❤️8860477959_Russian 100% Genuine Escorts I...
Call Girls In Sikandarpur Gurgaon ❤️8860477959_Russian 100% Genuine Escorts I...
lizamodels9
Contemporary Economic Issues Facing the Filipino Entrepreneur (1).pptx
Contemporary Economic Issues Facing the Filipino Entrepreneur (1).pptx
MarkAnthonyAurellano
Flow Your Strategy at Flight Levels Day 2024
Flow Your Strategy at Flight Levels Day 2024
Kirill Klimov
Call US-88OO1O2216 Call Girls In Mahipalpur Female Escort Service
Call US-88OO1O2216 Call Girls In Mahipalpur Female Escort Service
callgirls2057
Annual General Meeting Presentation Slides
Annual General Meeting Presentation Slides
KeppelCorporation
Tech Startup Growth Hacking 101 - Basics on Growth Marketing
Tech Startup Growth Hacking 101 - Basics on Growth Marketing
Shawn Pang
Vip Female Escorts Noida 9711199171 Greater Noida Escorts Service
Vip Female Escorts Noida 9711199171 Greater Noida Escorts Service
ankitnayak356677
2024 Numerator Consumer Study of Cannabis Usage
2024 Numerator Consumer Study of Cannabis Usage
Neil Kimberley
Recently uploaded
(20)
8447779800, Low rate Call girls in Tughlakabad Delhi NCR
8447779800, Low rate Call girls in Tughlakabad Delhi NCR
BEST Call Girls In Old Faridabad ✨ 9773824855 ✨ Escorts Service In Delhi Ncr,
BEST Call Girls In Old Faridabad ✨ 9773824855 ✨ Escorts Service In Delhi Ncr,
8447779800, Low rate Call girls in Rohini Delhi NCR
8447779800, Low rate Call girls in Rohini Delhi NCR
Call Us 📲8800102216📞 Call Girls In DLF City Gurgaon
Call Us 📲8800102216📞 Call Girls In DLF City Gurgaon
Progress Report - Oracle Database Analyst Summit
Progress Report - Oracle Database Analyst Summit
/:Call Girls In Indirapuram Ghaziabad ➥9990211544 Independent Best Escorts In...
/:Call Girls In Indirapuram Ghaziabad ➥9990211544 Independent Best Escorts In...
Call Girls In Radisson Blu Hotel New Delhi Paschim Vihar ❤️8860477959 Escorts...
Call Girls In Radisson Blu Hotel New Delhi Paschim Vihar ❤️8860477959 Escorts...
Cash Payment 9602870969 Escort Service in Udaipur Call Girls
Cash Payment 9602870969 Escort Service in Udaipur Call Girls
8447779800, Low rate Call girls in Kotla Mubarakpur Delhi NCR
8447779800, Low rate Call girls in Kotla Mubarakpur Delhi NCR
Global Scenario On Sustainable and Resilient Coconut Industry by Dr. Jelfina...
Global Scenario On Sustainable and Resilient Coconut Industry by Dr. Jelfina...
Call Girls in DELHI Cantt, ( Call Me )-8377877756-Female Escort- In Delhi / Ncr
Call Girls in DELHI Cantt, ( Call Me )-8377877756-Female Escort- In Delhi / Ncr
Intro to BCG's Carbon Emissions Benchmark_vF.pdf
Intro to BCG's Carbon Emissions Benchmark_vF.pdf
Call Girls In Sikandarpur Gurgaon ❤️8860477959_Russian 100% Genuine Escorts I...
Call Girls In Sikandarpur Gurgaon ❤️8860477959_Russian 100% Genuine Escorts I...
Contemporary Economic Issues Facing the Filipino Entrepreneur (1).pptx
Contemporary Economic Issues Facing the Filipino Entrepreneur (1).pptx
Flow Your Strategy at Flight Levels Day 2024
Flow Your Strategy at Flight Levels Day 2024
Call US-88OO1O2216 Call Girls In Mahipalpur Female Escort Service
Call US-88OO1O2216 Call Girls In Mahipalpur Female Escort Service
Annual General Meeting Presentation Slides
Annual General Meeting Presentation Slides
Tech Startup Growth Hacking 101 - Basics on Growth Marketing
Tech Startup Growth Hacking 101 - Basics on Growth Marketing
Vip Female Escorts Noida 9711199171 Greater Noida Escorts Service
Vip Female Escorts Noida 9711199171 Greater Noida Escorts Service
2024 Numerator Consumer Study of Cannabis Usage
2024 Numerator Consumer Study of Cannabis Usage
Foley Hoag Patent Basics
1.
© 2014 Foley
Hoag LLP. All Rights Reserved. Patents in the Life Sciences 1 Patents & Patenting in the Life Sciences Dana Gordon, PhD IP Department Foley Hoag LLP March 25, 2014
2.
Patents in the
Life Sciences | 2 © 2014 Foley Hoag LLP. All Rights Reserved. Patent Fundamentals What is a patent? What makes an invention patentable? The patent process. Patent strategy.
3.
Patents in the
Life Sciences | 3 © 2014 Foley Hoag LLP. All Rights Reserved. What Is a Patent? A legal monopoly Based on the Constitution: Congress shall have the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
4.
Patents in the
Life Sciences | 4 © 2014 Foley Hoag LLP. All Rights Reserved. What Is a Patent? Quid pro quo –Exchange of disclosure of idea for a legal right Legal monopoly –An incentive system –Exclusion of competition/market power –Reward for disclosure of invention Right to exclude –a mere “right to exclude others from making, using, offering to sell, or selling the invention throughout the United States” –Only right that a patent grants is the right to sue others
5.
Patents in the
Life Sciences | 5 © 2014 Foley Hoag LLP. All Rights Reserved. Patents in the Life Sciences Considerations in the Life Sciences Patentability of Inventions. –Patents prevent competitors from copying your invention –Particularly important in biotech industry where cost of development (research, regulatory approval) is extremely high. Freedom to Operate –Need to ensure that business model is not impeded by third party patents. –If a blocking patents exist: • Is there a work-around available? • Could the patent be licensed? • Is the patent valid?
6.
Patents in the
Life Sciences | 6 © 2014 Foley Hoag LLP. All Rights Reserved. Patent Nuts & Bolts Specification –Includes the drawings and text of the application. –Must provide a “written description” of the invention and “enable” the invention to be made and used. –The specification does not change during prosecution of a patent application.
7.
Patents in the
Life Sciences | 7 © 2014 Foley Hoag LLP. All Rights Reserved. Patent Nuts & Bolts Claims –Define the boundaries of the legal monopoly provided by the patent –Often change during prosecution of the patent –Claim changes must be “described” and “enabled” by the specification as filed.
8.
Patents in the
Life Sciences | 8 © 2014 Foley Hoag LLP. All Rights Reserved. Patent Nuts & Bolts The claims alone define the monopoly, just as a deed defines a piece of physical property.
9.
Patents in the
Life Sciences | 9 © 2014 Foley Hoag LLP. All Rights Reserved. Lifecycle of a “Typical” Patent Prosecution Post-Grant Proceedings Enforcement 1 Year Negotiation with Patent Office 18 Months
10.
Patents in the
Life Sciences | 10 © 2014 Foley Hoag LLP. All Rights Reserved. Patent Term Filed before June 8, 1995: 17 years from issuance Filed after June 8, 1995: 20 years from earliest non-provisional filing – Patent term may be lengthened to compensate for delays at USPTO or FDA Filed before June 8, 1995: 17 years Filed after June 8, 1995: 20 years
11.
Patents in the
Life Sciences | 11 © 2014 Foley Hoag LLP. All Rights Reserved. Is it Patentable? To be patentable, an invention must: Encompass “patentable subject matter” Be useful Be new Be non-obvious
12.
Patents in the
Life Sciences | 12 © 2014 Foley Hoag LLP. All Rights Reserved. Patentable Subject Matter “Anything Under the Sun Made by Man” Processes – In U.S., this includes therapeutic and diagnostic methods Machines and Manufactures Compositions of matter – chemical compounds, proteins, antibodies, artificial nucleic acids, transgenic cells, transgenic organisms
13.
Patents in the
Life Sciences | 13 © 2014 Foley Hoag LLP. All Rights Reserved. Patentable Subject Matter However, the following are not patentable: Products of nature Abstract concepts
14.
Patents in the
Life Sciences | 14 © 2014 Foley Hoag LLP. All Rights Reserved. Inventions are Patentable Only if Useful Low standard for utility. However, a patent is not a hunting license -- you cannot patent small molecules, genes, proteins, etc. if they have no known utility.
15.
Patents in the
Life Sciences | 15 © 2014 Foley Hoag LLP. All Rights Reserved. Inventions are Patentable Only if New You will not get a patent if: Someone else files a patent application disclosing your invention before you file. Someone else publishes or publicly discloses “your” invention before you file a patent application. You publish your own invention more than a year before you file a patent application. You sell your invention more than a year before you file a patent application
16.
Patents in the
Life Sciences | 16 © 2014 Foley Hoag LLP. All Rights Reserved. Inventions are Patentable Only if New Situation: Your company discovers a chemical compound that can be used to treat cancer. The chemical compound has previously been publicly used to waterproof boats. Can you patent your invention?!
17.
Patents in the
Life Sciences | 17 © 2014 Foley Hoag LLP. All Rights Reserved. Inventions are Patentable Only if New Situation (cont’d): Cannot get a patent on the compound itself - not new. However, you may be able to get a patent on: –Methods of using the compound to treat cancer –Pharmaceutical formulations containing the compound
18.
Patents in the
Life Sciences | 18 © 2014 Foley Hoag LLP. All Rights Reserved. Inventions are Patentable Only if Not Obvious Not patentable if it would have been “obvious” to combine previously known elements to arrive at your novel invention. Example: Invention is the treatment of a form of cancer by administering both Compound A and Antibody B to a patient. Reference 1 is a scientific paper that teaches that Compound A can be used to treat cancer. Reference 2 is an earlier filed patent application that claims the use of Antibody B to treat cancer. Invention is likely obvious (i.e., not patentable) in light of References 1 and 2
19.
Patents in the
Life Sciences | 19 © 2014 Foley Hoag LLP. All Rights Reserved. Inventions are Patentable Only if Not Obvious Some ways to show an invention is nonobvious: The combination of known elements produces unexpected results –The combination of Compound A and Antibody B results in unexpected efficacy – synergy! The art taught away from the invention –A prior art paper taught that administration of Compound A to a patient taking Antibody B resulted in potentially lethal side-effects. “Secondary” Considerations Long-felt need Failure by others Commercial success Copying by others Acclaim of others Licensing
20.
Patents in the
Life Sciences | 20 © 2014 Foley Hoag LLP. All Rights Reserved. From Conception to Patent: First Steps First Steps Following Conception: –Inventor drafts an Invention Disclosure – document used to describe invention –Inventor may be asked to perform a preliminary patentability search – informal search of prior art to determine whether invention is really new –Preliminary commercial evaluation – getting a patent is expensive, not all inventions are worthy of patent protection
21.
Patents in the
Life Sciences | 21 © 2014 Foley Hoag LLP. All Rights Reserved. From Conception to Patent: Drafting Drafting a Patent Application: –Usually should be done by a qualified patent attorney. –It is important to ensure that the application covers both the broad invention and the commercial embodiment. –In addition to being a legal document, a patent application is also an advertisement for your technology. –Make sure inventorship is correct.
22.
Patents in the
Life Sciences | 22 © 2014 Foley Hoag LLP. All Rights Reserved. Filing Options – U.S. utility Application • Fastest way to get your application before the examiner. • Starts the patent clock. – Ex-U.S. Application • Can establish priority for a U.S. utility application filed within 1 year. • Can not be used to overcome a statutory bar. • Does not start the patent clock in the U.S. – U.S. Provisional Application • Can establish priority for a U.S. utility application filed within 1 year. • Does not publish. • Is not examined • Does not start the patent clock. – PCT Application • International application • Delays examination • Starts patent clock
23.
Patents in the
Life Sciences | 23 © 2014 Foley Hoag LLP. All Rights Reserved. From Conception to Patent: at the PTO Patent Prosecution is a negotiation with the patent office where the Applicant negotiates with the Examiner to obtain claims that are as broad as possible. Prosecution may entail written arguments and examiner interviews. The claims often change during patent prosecution, but the specification remains the same. After issuance patents can be subject to challenge.
24.
Patents in the
Life Sciences | 24 © 2014 Foley Hoag LLP. All Rights Reserved. Patents are Valuable! WHAT YOU CAN DO WITH A PATENT Tout it: A strong IP position can be critical in obtaining investment. License it: Collect royalties by allowing others to practice the invention Enforce it: Bring infringement suits against others practicing the invention Sit on it: There is no requirement in U.S. law to practice a patented invention
25.
Patents in the
Life Sciences | 25 © 2014 Foley Hoag LLP. All Rights Reserved. Do You Really Need a Patent? Patents are Expensive – Obtaining a patent costs many thousands of dollars. Patents take a long time to obtain – Depending upon the technology, it may take several years before a patent examiner even looks at your application. Patents require you to disclose your invention –Patent applications require you to disclose how to make and use your invention. –Applications publish 18 months after filing Some patents are difficult to enforce All patents are expensive to enforce –Enforcing a patent can cost many hundreds of thousands of dollars.
26.
Patents in the
Life Sciences | 26 © 2014 Foley Hoag LLP. All Rights Reserved. The Value of a Patent Patents are critical for technologies that require long and costly development and/or that require government regulatory approval. Examples: pharmaceuticals, biologics or diagnostics. Patents may not be worthwhile for technologies that can be developed quickly, rapidly become obsolete, and/or can be used confidentially. Examples: manufacturing processes or software.
Download now