PATENT Intellectual Property Rights (IPR) Hampus Rystedt M. Sc. Molecular Biotechnology, Patent attorney BRANN AB [email protected]
Dec 15, 2015
PATENT
Intellectual Property Rights (IPR)
Hampus RystedtM. Sc. Molecular Biotechnology, Patent
attorneyBRANN AB
PATENT
Intellectual PropertyCopyright
No registration
Cost free
Protects literary works, works of art, computer programs
Protection: 70 years from the death of the creator
Industrial propertyPatents, trademarks, design, plant variety protection
Requires registration
Annuity fees
Protects industrial products and methods
Limited in time (patents, designs, PVPs) or unlimited (trademarks)
PATENT
Brief history~500 AD: Trade marks for sewing needles in China567: First copyright case (western world)15th cent.: Systems resembling patents in Great Britain and
Italian city states1787: Design protection for linnen prints, duration two months1875-76: Great Britain creates a Trademark Act and the first
Trademark Register1883: Paris Convention for the protection of Industrial
Property1970: Patent Cooperation Treaty1994: TRIPs
PATENT
Industrial property rightsMaximum duration
Protects Rights
Patent 20 (25) yrs Technical solution
Commercial use
Trademarks n x 10 yrs Name or characteristics of goods
Commercial use
Design 5 x 5 yrs Design Commercial use
Plant Variety Protection
25 (30) yrs Plant variety Commercial use
PATENT
What is a patent?Time limited right to stop others from
commercially using my invention
Can be considered as a contract between the inventor and the society
The inventor gets a monopoly, and
The society gets to publish the invention
Inventors are encouraged to publish their invention => the technology is disclosed to the public
PATENT
Criteria for patentabilityNovelty
International novelty (U.S. has 1 yr grace period)
Objective criterion
Inventive step”Not obvious in view of the prior art”
Subjective criterion
Industrial applicability”Made or used in any kind of industry”
Seldom questioned
PATENT
Exceptions to patentability
Methods for medical treatment or diagnosis practised on the human bodyWhat is only:
A discovery
A computer program
Games, methods for doing business, et c.
Plant and animal varieties (plants and animals are patentable, however)Inventions, the commercial use of which would be contrary to morality or ordre public
PATENT
Ethical exceptions, Patents Act 1 a §The human body, at the various stages of its formation and
development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, cannot constitute patentable inventions.
An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element.
PATENT
Ethical exceptions, Patents Act 1 b §Inventions shall be considered unpatentable where their
commercial exploitation would be contrary to ordre public or morality.
the following, in particular, shall be considered unpatentable:(a) processes for cloning human beings;(b) processes for modifying the germ line genetic identity of
human beings;(c) uses of human embryos for industrial or commercial purposes;(d) processes for modifying the genetic identity of animals which
are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.
PATENT
Medical special provisionsFirst medical indication:A previously known chemical compound
may be patented for use as a pharmaceutical
Second medical indication:A previously known pharmaceutical can be
patented for a new indication
PATENT
The exclusive rightA right to prevent others from
Manufacturing the inventionSelling, or offering to sell, the inventionImporting the invention
ExceptionsNon-commercial practisingResearch on the invention as suchClinical trials with protected reference medicinal productPrior use rightsEx tempore manufacturing of pharmaceuticals
PATENT
Supplementary Protection CertificatesExtension of time of protection if the
procedure for marketing approval of a patent protected pharmaceutical takes more than five years.
Maximum extra time of protection is five years.
PATENT
Patents are national rightsPatents must, in principle, be applied for in
each individual country where protection is sought.
A local attorney needs to be appointed in each country and the patent application must be translated into the national language.
PATENT
Conventions and treaties
PC, Paris Convention, is the basis for modern patent law internationally. Gives the possibility to claim priority. Establishes the principle of reciprocity.PCT, Patent Cooperation Treaty, facilitates coordinated international search and examination. Postponement of national phase.TRIPs, seeks to harmonise patent laws within the WTO.EPC, European Patent Convention, centralised search, examination and grant of European patent applications.
PATENT
Time line
Optionally: Novelty search
Filing at t=0 mths
Search and examination
report PRV, 6-7 mths
12 mths 18 mthsPublication
Internationalapplication
National application
Search report and Examination Opinion
15 mths
Preliminary Report on Patentability
27 mths
Filing of arguments(optional)
Filing of arguments
Allowance/refusalx mths
Poss. opposition< x+9 mths
Approximated costs (Euro)1 000-10 000 300 1 000-5 000 0-5 000 10 000-100 000
PATENT
DescriptionMust be sufficiently detailed to
allow the person skilled in the art to work the invention in the entire claimed scope, andshow that the inventor was in possession of the invention at the time of filing
Should compriseTechnical field of the inventionBackground/prior art/known technologySummary of the inventionBrief description of the drawingsDetailed description of the inventionExamples/experiments
PATENT
ClaimsThe claims define the extent of protection
Thus, it is important that the claims define the invention
May be directed to products, methods or uses (use-claims not accepted in the U.S.)
The claims are interpreted in the light of the description (and file prosecution history in the U.S.)
PATENT
Claim structure1. Pharmaceutical composition comprising an
analgesic, a central stimulant and optionally pharmaceutically acceptable carriers and/or excipients.
2. Composition according to claim 1, wherein the analgesic is acetyl salicylic acid.
3. Composition according to claim 1 or 2, wherein the central stimulant is caffeine.
PATENT
Amendments during prosecution
No substantial amendments may be done after the application has been filedData supporting the application may usually be filed, but does not become part of the application
PATENT
Strategy aspectsA patent is a considerable investment in time and money. It gives
A right to stop others from using the invention for free, butNo right to practice the invention
How can you earn money from this?Market exclusivity(cross-) licensing the patent rightsSelling the patent rights
Value of patent determined by value of market