Transcript Biotechnology and IP - University of Windsor – EPICentre

EPICentre Legal Workshop Series:
Biotechnology and IP
Presented to:
Entrepreneurship Practice & Innovation
Centre , September 20, 2016
Presented by:
Jenna Wilson & Mee Ling Wong
Patent & Trademark Agents
Intellectual Property Lawyers
Who are we?
Jenna Wilson
• lawyer, patent agent, trademark agent
• emphasis on software, mechanical, electronics,
financial technology, contracts
Mee Ling Wong
• lawyer, patent agent, trademark agent
• emphasis on biotech, pharmaceuticals, oil &
gas
Topics
• types of intellectual property (IP)
• IP rights and business
• protecting your biotech innovations
What is intellectual property?
• sets of legal rights protecting intellectual
creations—the right to exclude
• mostly time-limited
• national/territorial scope (treaties aid in
obtaining rights abroad)
• varying degrees of formal, legal, or practical
requirements
• must be enforced by owner/licensee
Why secure IP rights?
• IP rights can be crucial to your business
strategy
• protect your strengths
• minimize weaknesses
• position yourself for opportunities
• anticipate and neutralize threats
• source of revenue
Copyright
• protects expressive works
• original literary (includes computer programs),
dramatic, artistic and musical works
• limited utility for functional or physical
innovations
• balanced against users’ rights
• rights arise automatically; registration optional
but recommended in some cases
• minimum 50 years of protection
Trademarks
• protect your brand
• words, sounds, designs, shape, etc. that
distinguish the source of goods and services
• rights can be secured by Federal registration
(best option) or protected as unregistered mark
(more challenging to enforce)
• can exist, in theory, in perpetuity
• stay tuned for EPICentre talk on trademarks!
Designs
• protects ornamental appearance of utilitarian
objects
• in some cases, copyright or patent not available
but design registration may be
• must be secured by examination and
registration process
• max 10 years protection
Other forms of protection (before we get
to patents)
• integrated circuit topographies
• plant breeders’ rights
Patents
• time-limited monopoly to make, construct, use,
sell an invention
• maximum 20-year term
• inventions are arts, processes, machines,
manufactures, compositions of matter,
improvements, with some exclusions
• non-trivial application and examination process
• must be new, inventive, and useful
What can’t you patent?
• scientific principles and abstract theorems
• purely natural processes
• higher life forms (e.g. transgenic animals,
plants)
• application of professional skill, including
methods of medical treatment
• fine arts (e.g. artistic or literary works)
• forms of energy (e.g. signals)
Who can obtain a patent?
• inventor or inventor’s legal representative
• assignees, employers, universities
• understand your university's Tech Transfer
Policy: who owns your research?
How do you get a patent?
• prior art search (optional, but a very good idea
• file application with disclosure, claims,
drawings
• examination process; examiner will allow or
refuse, options for appeal
• application will be published whether you get a
patent or not
• maintenance (renewal) fees
CA Patent No. 2,446,195
“Processes and Apparatus for
Extraction of Active
Substances and Enriched
Extracts from Natural
Products”
When to file a patent?
• first-to-file system
 “race to the patent office”
 but be careful not to jump the gun; you
must have sufficient description to enable
others to understand and make invention
• novelty requirement
• best practice - file before first public disclosure
• grace period in select countries
Was the invention disclosed?
• publicly disclosing your invention before filing a
patent application may preclude you from
getting patent protection
• disclosure includes submitting your work to a
journal or speaking at a conference, but also
includes:
 intra- or inter- faculty discussions
 thesis defenses (request it be closed!)
 weekly or monthly research updates
Biotech Inventions: What’s patentable?
Mining Your Research for IP – Ex. 1
• Jane has discovered a new protein, ABC, which
is exclusively expressed in cancerous lung cells
• Jane has also identified the gene, previously
unknown, that encodes the ABC protein
• by administering an ABC specific antibody, Jane
is able to convert cancerous lung cells to
normal lung cells
Ex.1 – Is there any patentable subject matter?
• ABC protein (specific amino acid sequence)
• abc gene (specific nucleotide sequence)
• antibody specific for ABC protein
• diagnostic methods for lung cancer (e.g.
measuring ABC protein levels or abc gene
expression)
• use of ABC specific antibody for treating lung
cancer
Mining Your Research for IP – Ex. 2
• XYZ is a known protein, which functions as an
anti-freeze in fish
• John has discovered that the addition of XYZ
protein to ice cream improves its texture by
reducing the formation of ice crystals
• PEGylated XYZ was found to be more effective
than non-modified XYZ in reducing ice crystals
in ice cream
Ex.2 – Is there any patentable subject matter?
• PEGylated XYZ (but not XYZ, which is old and
known)
• ice cream comprising XYZ or PEGylated XYZ
• use of XYZ or PEGylated XYZ for reducing ice
crystal formation in ice cream
Mining Your Research for IP – Ex. 3
• diphenhydramine (e.g. “Benadryl”) is a well
known allergy medication
• effectiveness is attributed to its ability to block
the release of histamines
• Pat has discovered that diphenhydramine does
not block the release of histamines, but rather
it activates a known enzyme, QRT, that
destroys histamines
Ex.3 – Is there any patentable subject matter?
• needs more research first!
• diphenhydramine and its use for the treatment
of allergies and enzyme QRT are old and known
• discovery of how diphenhydramine actually
works in the treatment of allergies is not
patentable
• future research may reveal new uses of
diphenhydramine or new compounds that
activate QRT
Questions?
Jenna Wilson
[email protected]
Mee Ling Wong
[email protected]
Resources
• Canadian Intellectual Property Office (cipo.gc.ca)
• United States Patent and Trademark Office
(www.uspto.gov)
• World Intellectual Property Organization
(www.wipo.int)