Post on 22-Dec-2015
Intellectual Property Overview for the Academic Researcher
AMSTERROTHSTEIN& EBENSTEIN LLP
December 9, 2008
Kenneth George
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Intellectual Property is
property created from the mind
What is intellectual property
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Copyrights:
Original expressions of ideas
Trademarks:
Words, symbols or sounds that identify source
Patents:
New, useful and non-obvious products or uses
Types of Intellectual Property
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What is a patent?
A patent is a limited right granted by the U.S. (or
other) government to exclude others from
practicing an invention.
the claims of a patent define the invention covered by the patent
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What is a patent?
Applies to the first and true inventors
of a new, not obvious and
useful product or use in exchange for the public
disclosure of the invention. Lasts for 20 years from filing date
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Why seek patent protection?
Patents protect your development work
Patents are important to commercialization of your technology
Patent licenses to third parties potentially provide research support and/or royalty income for AECOM and inventors
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What do you get from a patent?
A patent is a right to exclude others from practicing the claimed invention. Does not guarantee that you can practice
the invention, only that others can not. You are entitled to at least some
compensation if other companies practice your patent.
You may be entitled to stop others from using your invention.
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What is an invention?
An “invention” occurs when there is a “conception” and “reduction to practice.” Conception is the mental part.
Coming up with the idea. Reduction to practice is
actually making the invention. Filing of an application is
considered a type of reduction to practice.
Invention
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Who is an inventor?
An inventor is someone who contributed to the conception of an invention claimed in one or more of the claims of the patent.
Someone who merely acts as the “hands” of an inventor without more is not an inventor.
Authorship and inventorship are different
I think we should …
We could …
Inventors
I’ll build it …
Not an inventor
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What is the criteria for patentability?
New or novel Useful or have utility Not obvious
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New (or novel)
No one else came up with the exact same idea before.
No single reference has all of the elements of your claim.
What is claimed:
1. A compound having:
A
B
C and
D
Prior Art 1
A compound having A and B.
Prior Art 3 A compound having
A, B, C and D.XNot new
Prior Art 2
A compound having A and C.
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Useful
Your invention must be useful.
Most biotech and pharmaceutical inventions satisfy the utility requirement (i.e., they are useful).
Exception:Expressed Sequence Tags (ESTs) -- short nucleotide sequences that represent a fragment of a cDNA clone of unknown function (e.g., massive sequencing of genes as Humane Genome Sequences (HGS) without determination of function)
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Not obvious
It would not be obvious to one of ordinary skill in the art to come
up with your invention.
Obviousness is determined by combining prior art references:
What is claimed:
1. A compound having:
A
B
C and
D
Prior Art 1
A compound having A, B, C and E.
Prior Art 2
Suggest that D and E are equivalent.
Substituting D for E would be obvious
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What is Prior Art in the U.S.?
“Known or used by others” in the U.S. before the invention
Published or patented by others before the invention
Published or patented by anyone more than one year before the earliest effective filing date
On sale or offered for sale in the U.S. more than one year before the earliest effective filing date
In public use or display (e.g., poster or power point presentation) more than one year before the earliest effective filing date
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What is Prior Art outside the U.S.?
Lack of novelty and inventive step (i.e., obvious) requirements
Publication before filing date (even by one day) is generally considered a bar to obtaining foreign patent protection
Critical to file before disclosure to preserve foreign rights
16Examples of Pharmaceutical/Biotech Inventions
Novel compounds New uses of old compounds Processes for making compounds Methods for screening for compounds against
certain targets Novel nucleic acids / proteins / antibodies Methods for treating / diagnosing diseases Transgenetic non-human animal models Recombinant cell line Vaccines
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The Patent Process
Communicating the Idea Preparing and filing an Application The Patent Prosecution Proceedings The Issued Patent Licensing the Patent
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Communicating the Idea
Invention
Prepare an invention disclosure data sheet
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Parts of the Invention Disclosure
Descriptive Title
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Parts of the Invention Disclosure
Non-confidential description of the
invention
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Parts of the Invention Disclosure
Provide “Detailed Description”
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Parts of the Invention Disclosure
Provide historical record of invention
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Parts of the Invention Disclosure
Provide historical record of invention
(cont)
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Parts of the Invention Disclosure
Commercial possibilities?
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Parts of the Invention Disclosure
Related Contracts
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Parts of the Invention Disclosure
Collaborators
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Parts of the Invention Disclosure
Inventors
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Parts of the Invention Disclosure
Additional Inventors
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Parts of the Invention Disclosure
Witnesses
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Submit Invention Disclosure to Office of Biotechnology
Evaluation of Invention Disclosure By Patent Committee
31Upon Approval by Patent Committee, Submission of Invention Disclosure to Amster, Rothstein & Ebenstein LLP for Evaluation
Ken George
Craig Arnold
Alan Miller
AMSTERROTHSTEIN& EBENSTEIN LLP
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Preparing and filing a Patent Application
USPTO
Ken George
Craig Arnold
Alan Miller
AMSTERROTHSTEIN& EBENSTEIN LLP
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Parts of an Application
Application Data Sheet
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Parts of an Application
Title
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Parts of an Application
Preliminary Statements
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Parts of an Application
Background of the Invention
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Parts of an Application
Summary of the Invention
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Parts of an Application
Brief Description of Figures
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Parts of an Application
Figures
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Parts of an Application
Detailed Description
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Parts of an Application
Claims
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Parts of an Application
Abstract
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The Patent Process
Assignment
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The Patent Process
Filing Receipt
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The Patent Process
Notice to file Missing Parts
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The Patent Process
Declaration
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The Patent Process
Information Disclosure Statement
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The Patent Process
Office Action
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The Patent Process
Office Action
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The Patent Process
Office Action
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The Patent Process
Office Action
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The Patent Process
Office Action
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The Patent Process
Amendment and Response
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The Patent Process
Amendment and Response
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The Patent Process
Amendment and Response
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The Patent Process
Amendment and Response
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The Patent Process
Declaration
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The Patent Process
Notice of Allowance
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The Patent Process
Patent Issuance
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The Patent Process
Patent License
Copyright Issues
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Copyrights
Copyrights are original works of authorship fixed in any tangible medium of expression from which they can be perceived, reproduced, or otherwise communicated. Copyrighted materials are protected from being copied without authorization (hence they give a “right to copy”).
63Registration Procedures for Copyrights
Can take the form of a registration or be unregistered; but without prompt registration cannot enforce in a U.S. Court
Rights are based on first publication No Need for foreign registration Form is deceptively simple; an
inexperienced applicant can nullify copyright rights
Trademark Issues
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Trademarks/Service Marks
Trademark/Service mark is a word, symbol or device which indicate a single source of origin of goods or services.
TM®SM
66Registration Procedures for Trademarks/Service Marks
Can take the form of a registration or be unregistered
Rights are based on use, advertising and promotional literature, product packaging is important to review to identify full range of marks used
Need to consider filings around the world where company does business or wants to do business
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Kenneth Georgekgeorge@arelaw.com; 212 336-8090
90 Park Avenue New York, NY 10016Main: 212 336 8000Fax: 212 336 8001
AMSTERROTHSTEIN& EBENSTEIN LLP
www.arelaw.com