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Intellectual Property Overview for the Academic Researcher

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Intellectual Property Overview for the Academic Researcher
Intellectual Property Overview
for the Academic Researcher
AMSTER
ROTHSTEIN
& EBENSTEIN LLP
Kenneth George
December 9, 2008
What is intellectual property
Intellectual
Property is
property created
from the mind
2
3
Types of Intellectual Property
Patents:
Trademarks:
New, useful and nonWords, symbols or sounds
obvious products or uses that identify source
Copyrights:
Original expressions of
ideas
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
4
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
5
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
6
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.
What is an invention?
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.
8
Who is an inventor?
I think we
should …
We could
I’ll build it…
…
 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
Inventors
Not
an inventor
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10
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:
Prior Art 1
1. A compound
having:
A compound
having A and B.
A
B
Prior Art 2
C and
A compound
having A and C.
D
X
Prior Art 3 A
compound having
A, B, C and D.
Not new
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:
Prior Art 1
Prior Art 2
A compound
having A, B, C and
E.
Suggest that D
and E are
equivalent.
Substituting D for E
would be obvious
1. A compound
having:
A
B
C and
D
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
Examples 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
19
Parts of the Invention Disclosure
Descriptive Title
20
Parts of the Invention Disclosure
Non-confidential
description of the
invention
21
Parts of the Invention Disclosure
Provide “Detailed
Description”
22
Parts of the Invention Disclosure
Provide historical
record of invention
23
Parts of the Invention Disclosure
Provide historical
record of invention
(cont)
24
Parts of the Invention Disclosure
Commercial
possibilities?
25
Parts of the Invention Disclosure
Related Contracts
26
Parts of the Invention Disclosure
Collaborators
27
Parts of the Invention Disclosure
Inventors
28
Parts of the Invention Disclosure
Additional
Inventors
29
Parts of the Invention Disclosure
Witnesses
30
Submit Invention Disclosure to Office of Biotechnology
Evaluation of Invention Disclosure
By Patent Committee
Upon Approval by Patent Committee, Submission
of Invention Disclosure to Amster, Rothstein &
Ebenstein LLP for Evaluation
AMSTER
ROTHSTEIN
& EBENSTEIN LLP
Ken George
Craig Arnold
Alan Miller
31
32
Preparing and filing a Patent Application
AMSTER
ROTHSTEIN
& EBENSTEIN LLP
Ken George
Craig Arnold
Alan Miller
USPTO
33
Parts of an Application
Application Data
Sheet
34
Parts of an Application
Title
35
Parts of an Application
Preliminary
Statements
36
Parts of an Application
Background of the
Invention
37
Parts of an Application
Summary of the
Invention
38
Parts of an Application
Brief Description
of Figures
39
Parts of an Application
Figures
40
Parts of an Application
Detailed
Description
41
Parts of an Application
Claims
42
Parts of an Application
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
Amendment and
Response
55
The Patent Process
Amendment and
Response
56
The Patent Process
Amendment and
Response
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”).
63
Registration 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
®
TM
SM
Trademark/Service mark is a word,
symbol or device which indicate a
single source of origin of goods or
services.
Registration 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
66
Kenneth George
[email protected]; 212 336-8090
AMSTER
ROTHSTEIN
& EBENSTEIN LLP
www.arelaw.com
67
90 Park Avenue
New York, NY 10016
Main: 212 336 8000
Fax: 212 336 8001
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