Intellectual Property Overview for the Academic Researcher AMSTER ROTHSTEIN & EBENSTEIN LLP December...

Intellectual Property Overview for the Academic Researcher

AMSTERROTHSTEIN& EBENSTEIN LLP

December 9, 2008

Kenneth George

2

Intellectual Property is

property created from the mind

What is intellectual property

3

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

4

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

5

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

6

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

7

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.

8

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

9

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

10

What is the criteria for patentability?

New or novel Useful or have utility Not obvious

11

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.

12

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)

13

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

14

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

15

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

17

The Patent Process

Communicating the Idea Preparing and filing an Application The Patent Prosecution Proceedings The Issued Patent Licensing the Patent

18

Communicating the Idea

Invention

Prepare an invention disclosure data sheet

19

Parts of the Invention Disclosure

Descriptive Title

20


Non-confidential description of the

invention

21


Provide “Detailed Description”

22


Provide historical record of invention

23


Provide historical record of invention

(cont)

24


Commercial possibilities?

25


Related Contracts

26


Collaborators

27


Inventors

28


Additional Inventors

29


Witnesses

30

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


32

Preparing and filing a Patent Application

USPTO

Ken George

Craig Arnold

Alan Miller


33

Parts of an Application

Application Data Sheet

34


Title

35


Preliminary Statements

36


Background of the Invention

37


Summary of the Invention

38


Brief Description of Figures

39


Figures

40


Detailed Description

41


Claims

42


Abstract

43

The Patent Process

Assignment

44

The Patent Process

Filing Receipt

45

The Patent Process

Notice to file Missing Parts

46

The Patent Process

Declaration

47

The Patent Process

Information Disclosure Statement

48

The Patent Process

Office Action

49

The Patent Process

Office Action

50

The Patent Process

Office Action

51

The Patent Process

Office Action

52

The Patent Process

Office Action

53

The Patent Process

Amendment and Response

54

The Patent Process


55

The Patent Process


56

The Patent Process


57

The Patent Process

Declaration

58

The Patent Process

Notice of Allowance

59

The Patent Process

Patent Issuance

60

The Patent Process

Patent License

Copyright Issues

62

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

65

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

67

Kenneth [email protected]; 212 336-8090

90 Park Avenue New York, NY 10016Main: 212 336 8000Fax: 212 336 8001


www.arelaw.com

Intellectual Property Overview for the Academic Researcher AMSTER ROTHSTEIN & EBENSTEIN LLP December...

Documents

Transcript of Intellectual Property Overview for the Academic Researcher AMSTER ROTHSTEIN & EBENSTEIN LLP December...