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Advanced Biotechnology & IPR > IPR > Flashcards

IPR Flashcards

1
Q

An invention is:

A

A technical solution to a technical problem.

Novel combination of ideas, often based on discovery, but cannot be a discovery.

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2
Q

What makes an invention patentable?

A

1) Novelty - It must be new
2) Inventive step - The invention must not be obvious for a person skilled in the art. “Non-obvious” in US patent language,
3) Industrial application
4) Proper enablement/sufficient disclosure - Such as a person skilled in the art can reproduce the invention without problem solving
5) It must not be excluded from patenting

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3
Q

Who is the inventor?

A

The one who got the idea (you can have multiple inventors, but in the US, you will be asked to define who came up with what part of the invention). But you can co-develop something if you iterate.

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4
Q

What can invalidate a patent in the US?

A

If there are to many or to few on a patent application. Too many and the patent can be invalidated (5-7 people are waaaay to much).

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5
Q

When filing a patent, when does the potential granted patent count from?

A

The filling date!

So you don’t always have 20 years….

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6
Q

What is novelty?

A

“Is it identical? Yes or no.” – Don’t complicate it more than that.

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7
Q

What is excluded from patenting?

A

Art. 6:
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

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8
Q

How do you destroy global novelty?

A
  • Any form of public communication! If someone not attached to the project could find the information if they wanted without special agreement or purpose.
  • Also displays of the invention if you can figure out the inner workings from the display. It’s not a disclosure if you only show the outcome for example.
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9
Q

What is prior art?

A

Prior art is documentation that shows that a patent idea has already had public access. Can be anything from class books to research papers to even comic books and cartoons.

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10
Q

Large companies and investors will often not sign CDAs and NDAs because?

A

They are afraid of cross-contamination, they could already know this information, and now have to prove it. OR you can work in a big company and don’t know what other departments are doing, and are writing off rights for the company, now you have to show that you had the information already.

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11
Q

What is a patent claim?

A

A full sentence describing the claim.

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12
Q

If you improve on technology with a patent, what should you do?

A

1) File for patent on your new improved product.
2) Ask for licensing of the old technology or try to show prior art to destroy IP.
3) Maybe do cross-licensing, so you both get access to the needed IP.

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13
Q

What should you try to do when filing a patent?

A

Always file for the essential working mechanisms, so that if there are iterations, you will always have to be licensed.

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14
Q

Wildcards in Derwent

A

• 0-1 characters: $
• 1 character: ?
• 0 to many characters: *

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15
Q

Why patent - philosophically?

A

The capitalistic thought of private property transferred to “intangibilities”.

  • Meaning we can start trading them and start using them in a market aspect.
  • Is like a house, car, bike you name it. Physical property. You can trade them, you can “rent” out your house/patent etc.
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16
Q

Why is the US patent market changing?

A

New legislation said that nature-derived compounds/genes etc. cannot be patented. This means that fewer patents are filled and more confidential cooperation is done.

  • Great example of why patents are important.
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17
Q

Why patent from a market perspective? What can a patent do?

A

A right for the patentee to prohibit others from exploiting the patented invention. It’s a negative right (you can prohibit others) - it does however not necessarily mean that you can produce it yourself.

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18
Q

Can you always produce your patent?

A

You cannot necessarily exploit the field/product you patented. You can patent human cloning, but you cannot do this. You can patent a car that goes 1000mph, but you can’t necessarily sell it in DK.

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19
Q

Why patent in a financial perspective?

A

Patents protect investments in research and development (R&D). Makes it possible to do basic business development (market sizing, profitability calculations etc.).

  • BECAUSE – you can exploit and copy unpatented products or technology according to law. (You can’t make an EXACT copy, but you can always just change a corner or something small, and then it’s good. – Get a patent on the concept!)
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20
Q

Ecosystem in life science?

A

Big companies often just buy smaller companies for their IP. Are often dependent on this faster development from smaller companies.

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21
Q

The effect of a patent:

A

Prohibits the commercial processes of:

1) Using your technology/products
2) Producing your technology/product
3) Selling your product/technology
4) Importing your technology/product (to countries where you have the patent)
5) Offering your technology/product for sale

Being in possession of your technology/product with the objective of doing any of the above

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22
Q

What is Contributory infringement?

A

1) Selling or offering machines that can produce your product

2) Selling or offering materials which are especially suited for the manufacturing of your products when the seller knows that the buyer will produce your product from the materials.

3) Selling or offering ordinary materials which are not especially suited for the manufacturing of your product if the seller encourages the buyer to produce your product from the material.

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23
Q

Can you use patented technologies for R&D?

A

Yes! R&D is permitted to use previous patents – especially for academic research.

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24
Q

What happens if you’ve been doing a process for 10 years as a trade secret that somebody then files a patent on?

A

You can keep using your process if you can prove that you have used it (in secret) before the patent.

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25
Q

What convention started IPR?

A

The Paris convention started patents. If you file in one of the member countries of the convention, you have 12 months to file the exact same patent application in all the other countries, that has the same application date.

  • STILL enforced! You have 12 months to file your patent application.
  • OBS. Often the countries have different formats, but the texts etc has to be the same!
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26
Q

A basic timeline looks like?

A

Priority application (first filing of your application) – Day 0
(Paris convention kicking in here)

PCT (Patent Corporation Treaty) application – Month 12

Publication (if no previous patents overlap) - Month 18 (or later) – Always 18 months after first filing.

IPR report - Month 28

Need to file a national application or it dies - Month 30/31 (varies in countries)

(You need to file in all the countries you want a patent. You can’t do this again, because it is not novel anymore).

National patent application phase starts - 1-10 years (ish…. – it varies)

MEANING – we have a black box for 18 months where we don’t know what and who has filed a patent.

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27
Q

What is an IPR report?

A

A report done by the authorities on your patent applications novelty, inventive step and industrial application etc.

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28
Q

A basic timeline looks like?

A

Priority application (first filing of your application) – Day 0
(Paris convention kicking in here)

PCT (Patent Corporation Treaty) application – Month 12

Search result showing novelty – Month 16

Publication of the patent application (if no previous patents overlap) - Month 18 (or later) – Always 18 months after first filing.

IPR report - Month 28

Need to file a national application or it dies - Month 30/31 (varies in countries)

(You need to file in all the countries you want a patent. You can’t do this again, because it is not novel anymore).

National patent application phase starts - 1-10 years (ish…. – it varies)

MEANING – we have a black box for 18 months where we don’t know what and who has filed a patent.

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29
Q

What is the PCT?

A

PCT (Patent Corporation Treaty) – by World Intellectual Property Organization (WIPO).

Makes it possible to file a patent application that is the same as filling in all the member states/countries (around 170 states). – Around 35.000DKK.

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30
Q

Does the priority application have to be alive when you file a PCT application?

A

No, you just need a number, date and a text, it doesn’t have to be live.

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31
Q

How do you apply for a patent in EU?

A

See basic timeline at/before month 30/31 – you apply for a European patent. After granting in Europe, you have to say which countries you want the grant in. THEN, the 9 month opposition period starts.

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32
Q

How do you apply for a patent in EU?

A

See basic timeline at/before month 30/31 – you apply for a European patent. After granting in Europe, you have to say which countries you want the grant in.

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33
Q

What is post-grant opposition?

A

A competitor can oppose to the grant saying there is a problem with sufficient novelty, inventive step, disclosure etc.

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34
Q

What is post-grant opposition?

A

A competitor can oppose to the grant saying there is a problem with sufficient novelty, inventive step, disclosure etc. 9 months in Europe.

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35
Q

What three outcomes can come from the post-grant opposition if somebody opposed the grant?

A

Limited, full or destroyed patent.

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36
Q

Why is the post-grant opposition period smart for competitors?

A

You can annoy the patent-filer on a European level for cheap. After patent, you have to challenge the patent in each country.

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37
Q

What language does the Europe patent application be in?

A

The major EU languages which are English, German or French

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38
Q

When can you prohibit somebody from using your patented technology for commercial purposes?

A

When the patent is granted. In the meantime, people can actually utilize your technology.

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39
Q

Do we truly have a 20 year patent lifespan?

A

No, the 20 years are from your PCT application, so if you utilize your entire 12 month from priority application to PCT, you will have 21 years.

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40
Q

What should the priority application be?

A

Broad, but specific enough to protect it, to make sure that it covers all the specific sub-patents your want in the further application process.

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41
Q

What “shape” do patent applications often have?

A

A reverse pyramid shape. Start broad and narrow it down. “Screw” – “Made of iron” – “Can have a circular head” – “10 mm” etc.

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42
Q

Can you have multiple priority applications?

A

Yes. From Priority application 1 (P1) to PCT application you can do more Priority applications.
Patent claims can be added via P2, P3, P4 etc.

43
Q

A patent family stems from?

A

The day 0 priority application (P1)

44
Q

How can you utilize priority applications to ensure your invention iterations are covered from P1 to PCT, 12 months later? And ho can you buy more time?

A

File P1 – Keep working – Get iterations B, C, D – File P2, P3, P4 – Collect the desired Priority applications (P1, P2, P3, P4) into one PCT. This protects your B, C, D iterations along the way at each time point.

You can buy more time by dropping your P1 and filing a PCT application on your P2 and hope no one has filed something like your P1 in the time between P1 and P2. Now you have more time to develop your product.

45
Q

Why do you need to kill the P1 application?

A

You cannot leave claims outstanding – Paris convention

46
Q

What is the composition of P1, P2 and P3 priority applications?

A

P1 is P1 – P2 is P1 + A section about P2, P3 is P1 + P2 section and a P3 section

47
Q

How can you get more time for your PCT if R&D needs more data and what is the risk?

A

Not file for your P1 12 months later at the PCT, but file P2 instead. The risk is, that somebody filed a similar P1 afterwards and you lose your P1 invention maybe.

48
Q

Do priority applications cost money? And how can that be utilized?

A

No, so you can in principle keep filling a priority application each day and do a rolling application scheme. It’s a logistic nightmare, but you could.

49
Q

What could you do if you miss a PCT deadline in Denmark?

A

PCT applications can be filed in other countries than your P1 applications. So in principle, you could file in the US if you get someone to do it, because it’s still not midnight there.

50
Q

Can you copy text from other patent applications?

A

YES! There is not copyright on patent applications, so you can copy and paste from other applications.

51
Q

Should you only patent your inventions?

A

NO! You should also patent the applications of the invention. If you made the pen and paper, remember to also patent the use of pen on paper.

52
Q

When is an intermediate patentable?

A

If the end product is industrially applicable, then so are the intermediates/precursors.

53
Q

What are the two types of funding?

A

Soft funding (might have reporting demands and a slower process) vs. commercial funding (equity and experience)

54
Q

How do you get a good understanding of a customers need?

A

DON’T ask in future tense as everyone are more optimistic about the future “ohh ofc I would use an app that helps me loose weight” etc. Ask for current or past needs or experiences from them.

55
Q

why patent?

A

1) To prevent competitors from copying your innovation
2) To enhance the Company’s reputation
3) To secure investment
4) To increase likelihood of collaboration (through x-license)
5) To increase likelihood of friendly acquisition
6) To tie knowledge to the company

56
Q

Duration of a patent

A

20 years from filing

57
Q

Duration of a trademark and copyright

A

Trademark: Indefinite as long as you pay the annual fee. Trademark value is usually calculated by taking their tangible assets (inventory, buildings etc.) and subtracting from total price of shares.

Copyright: 70 years after last surviving author’s death. Typically art is copyrighted.

58
Q

Why patent

A

Patents are Society’s reward to the Inventors = an agreement to share benefits

The Inventor discloses information which might otherwise have remained secret to Society and the Inventor receives monopoly from Society

59
Q

What three types of claims are there in a patent?

A

• product claims
• use claims/method claims
• process for production

60
Q

What three phases do a patent usually have?

A

1) Priority year/Priority phase (0-12 months after filing)
2) PCT Phase (from PCT to 30/31. So often from 12-30/31)
3) National/regional phase (Applying in specific regions/countries)

61
Q

When filing for a patent in Europa trough European Patents what do you have to do afterwards?

A
  • Choose the countries in which you want to pursue this patent. There is a 9 month opposition period.
62
Q

Can the human body or its sequence/genes etc. be patented?

A

No.

Art 5
1. 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.

BUT

  1. 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.
63
Q

Can treatment methods be patented?

A

No. European patents shall not be granted in respect of:

methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body;

this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

64
Q

What is first medical use?

A

Compound X for use as a medicament

65
Q

What is second medical use?

A

substance X for use in the treatment of disease Y

66
Q

What is FTO (Freedom to operate)?

A

A freedom-to-operate analysis will show the number of patents on which your technology is dependent

67
Q

What is a license?

A

An agreement between the patent owner (Licensor) and the user/byer (Licensee)

Licensor will not sue Licensee….

The price for the license is – generally – money, e.g.
Up-front payment
Royalty payment

The price could also be another license (cross license)

68
Q

What is an alternative to licensing?

A

Buy the patent – transfer of all rights
Seller (Assignor) transfers ownership to buyer (Assignee) in a simple transaction

Or acquire the company.

69
Q

What should a license agreement include?

A

Use, Produce, Sell, Import, Offer for Sale
Patent(s) and know-how
Exclusivity/non-exclusivity
Field
What Licensee can do and not do
Territory
Sublicenses?

70
Q

Financial terms of License agreement include?

A

Signing fee
Annual maintenance fee
Up-front payments
Royalties (on sales)
Milestone payments (e.g. patent grant, clinical success)
Patent expenses
Sublicense income

71
Q

When is a chemical compound disclosed?

A

A chemical compound is not considered as known, unless the information in the document, together with
knowledge generally available enables it to be prepared and separated.

Meaning, you can draw up a molecule, but you did not disclose it if a method does not accompany it, AND in a patent application you need to do so.

72
Q

What is an A-document?

A

A document which examiners take into consideration, often showcasing for prior art.

Forms the basis for a person skilled in the art’s limited imagination.

Examples:
Textbook chapters

73
Q

What is an X-document?

A

Documents which, when taken alone, are considered damaging to a patent.

It is not necessary to combine information in a creative way - thus often novelty destroying.

74
Q

What is an Y-document?

A

Y-documents are documents of which two or more shall be combined in order for a skilled worker to come up with the invention. Has to be straight forward to be a strong argument against patentability.

They are hard to get away once listed by an examiner, so often inventors argument hard for inventive step using “surprisingly” often as a key word. Could also be argumentation that Compound A-D is often inhibited by B-C, we can improve this.

75
Q

What is industrial applicability?

A

Probably a left over from industrial times. Now it is extremely broad and hard not to defend.

76
Q

How do you secure enablement/sufficient disclosure on drugs/therapies not yet tested on humans?

A
  • In vitro or in vivo tests on lower animals and then hypothesize about the effect in humans.
77
Q

The Paris Convention is?

A

Secures a member country the same rights in all other Paris Convention countries. (174 countries)

Allows filing of priority application and then within 12 months in other member states.

78
Q

Who manages the Paris Convention?

A

WIPO (World Intellectual Property Organization)

79
Q

What is the Budapest Treaty?

A

A patent needs to be fully disclosed, in the regards of microorganisms, they cannot be easily described without having access to them. Thus, the microorganism must be available trough depositing before patenting. This is the Budapest Treaty.

80
Q

What is the PCT?

A

Patent Co-operation Treaty (PCT). (144 countries - enforced by WIPO)

Allows for filing as a single document in all the member countries until the national phase starts at 30/31 months (according to the specific country).

Must be applied before 12 months of priority application.

Pros: Simplicity and cost

81
Q

What is the EPC?

A

European Patent Convention (Managed by European Patent Office - EPO)

Makes is possible to enter a regional phase after the international phase (PCT) via the EP-system covering all EPC countries in one application, pushing the national fees. The EPO can grant patents in all EPC member countries, but the patent is first in place when it has been submitted to each individual EP country and issued as a national patent.

82
Q

When does a patent need to be manually translated in an AP application?

A

Only in court disputes, otherwise machine translation is fine.

83
Q

Legislation concerning crop plants are handled by?

A

The UPOV (Internation Union for Protection of New Varieties of Plants).

Plants with new stable phenotypes

84
Q

What is the USPTO?

A

United States Patent and Trademark Office

85
Q

What is the us Grace Period?

A

That you in the US can publish for a patent for 12 months after you publish. . However, authors must be the same and you can only designate countries that acknowledge grace periods like Canada and Japan.

86
Q

Is medical treatments patentable?

A

No - except from in the US according to the USPTO

87
Q

When could it be beneficial to stop a patent application?

A

If you find there is no way to get it patented, you can avoid publication of the application by withdrawing it before publication.

You could also choose to improve on a method, your previous application is only prior art if it is published.

88
Q

The published PCT carries what code and what suffix?

A

Code: WO
Suffix A1 (or A2/A3 or AN) depending on if it’s including a search report or not.

89
Q

What are P-documents?

A

Documents newer than the priority application but older than the international filing date. Meaning, it works like a X-document but for newer prority documents and material added to the international filing.

90
Q

What is lack of unity/restriction requirement (US) and why is it important for a patent application?

A

A patent can only cover one invention, if the examiner deems the application to lack unity, he will call “Lack of unity (EU) and Restriction Requirement (US)” and split the patent claims into two or more inventions that the patentee now must pursue as independent claims. These are now called Divisionals.

This is a huge loss, also go for one, you don’t want more groups.

91
Q

What is an IPRP?

A

International Preliminary Report on Patentability. A report that follows the search report from the PCT filing.

A negative IPRP can be discussed with the examiner and negotiated.

92
Q

What is US Public PAIR?

A

A website that shows the progress of patents for to the USPTO. Is not very old, so only newer patents are present.

Is the US equivalent of European Patent Register providing access to the transaction history between applicant and examiner as well as files.

93
Q

Can everyone file for a patent in the US?

A

Foreign inventors can, foreign patent agencies cannot, meaning they have to get American partners to file for them, adding cost.

94
Q

What is a Continuation?

A

When a patent application looses broader claims and continues with same patent specification and claim set without the broader claims.

95
Q

What is a patent family?

A

A group of patents and patent applications that have at least one priority document in common.

96
Q

When does the cost in a patent timeline increase the most?

A

In the national phase, as translations and annual fees kick in.

97
Q

Why are patent trees a good tool for an overview of patent families?

A

1) Overview of your own patents and patent application
2) FTO by monitoring competitors and their current status
3) You can judge the strategic importance of a patent
by the status of the family members near the tips of
the tree

98
Q

What does the A1, A2, or A3 classification in PCT and EP publications indicate?

A

A1: Publication with Search Report
A2: Publication without Search Report
A3: Publication of Search Report alone

A1 = A2 + A3

99
Q

What is prosecution? And when does it happen?

A

Prosecution is the period/process from application (PCT, national/regional) to a granted patent or a IPRP (International Preliminary Report on Patentability).

That is, the back and forth negotiation between and examiner and a patent applicant.

100
Q

An amended claim set is?

A

New claims submitted directed to subject-matter which has not been searched e.g. because it was only not found to be appropriate to extend the search to this subject-matter to start with.

101
Q

What is a Provisional Application?

A

1) A US (USPTO) application.
2) No one examines this, unless you end in court.
3) Disappears if no real application claims it.
4) Value of establishing priority is dependent on the writing.

102
Q

What is a Continuation-in-part?

A

Disclosing truly new aspects of the invention and adding this to a pending patent application.
- New claims will carry the priority date of the Continuation-in-part filling, not that of the parent application.

103
Q

Americans and the PCT is weird why?

A

The American examiners usually pay little attention to the PCT examiner’s analysis.

Advanced Biotechnology & IPR (5 decks)

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