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Your source for expert commentary on IP management issues.
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About
Editor-in-Chief, Anatole Krattiger
Editorial Board
Concept Foundation
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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Why This Topic Is Important
This section provides valuable guidance on how, when, and where—and whether—to file for intellectual
property protection for the best chance of success in developing that technology for real world
applications.
Key Implications and Best Practices: Section 10
- Published information, or research tools provided by a colleague, may be covered by IP rights. In the life sciences, the web of patents extends far and wide. This should neither deter nor distract you from good science. An awareness of basic IP management best practices will minimize possible future problems.
- You can intentionally make your inventions and the associated technologies accessible to everyone by publishing results instead of patenting them. Publishing results, however, does not guarantee full public access. Patents can still encroach upon the technical content of the work. Speak to your technology transfer manager about publications, and ask him or her to help with performing the necessary steps for turning your publication into a readily identifiable disclosure of patentable technology.
- If public disclosure is your goal as a way of preventing others from patenting a particular invention, it may be valuable to consider posting online or in searchable databases, with a valid date stamp, a longer working-paper version, supporting materials, or appendices. For this purpose, consider using dedicated services, such as a university technical disclosure bulletin or a centralized registry of unpublished papers, with official date stamps posted on faculty Web sites for online searches.
- If patenting and public disclosure are your goals, first consult with your institution’s technology transfer manager prior to disclosure. Your institution should have an effective mechanism in place to determine whether or not a patent should be filed without significantly delaying publication. But be aware that premature publication can lead to a loss of IP rights.
- Your institution’s technology transfer managers will need your input in order to make strategic decisions about where to pursue foreign patent applications. You likely know where competitors are located and where products arising from your research are needed.
- One of the services of PIPRA is to advise researchers in the plant sciences about which research is in the public domain and which is available for licensing on reasonable terms. If you are engaged in the development of biotechnology crops, you may find PIPRA’s Web site and services useful.
- Good laboratory practices and comprehensive laboratory notebooks can ensure that your research is suitable for subsequent regulatory filings. This can reduce costs and time to market.
 Abstract
Deposit of Biological Materials in Support of a U.S. Patent Application
by Dennis J. Harney, Timothy B. Mcbride
Abstract:
The deposit of biological material in support of a U.S. patent application is a mechanism by which an applicant can cure what might otherwise be potentially fatal defects in a patent application and even an issued patent. A biological deposit can, in some cases, satisfy the requirements of enablement, written description, and best mode, and potentially broaden the scope of claims in the event of litigation. This chapter briefly explores the relationship between biological deposits and patentability requirements, what can be deposited, where and when a deposit can be made, and who has access to the deposit.
Abstract
A Guide to International Patent Protection
by Ann S. Viksnins, Ann M. Mccrackin
Abstract
Patenting Strategies: Building an IP Fortress
by John Dodds
Abstract:
A comprehensive intellectual property (IP) portfolio can be of substantial value to both private and public sector entities. Patents are a key element of IP portfolios and must be managed according to the mission, objectives, and motivations of the organization that owns them. Large companies can afford an offensive patent strategy, but small companies may not have the resources for this. Therefore, it is extremely important for private sector entities, especially small- and middle-sized companies, to design and implement an effective and cost-efficient strategy for patent management. For public sector entities, patent strategies will focus on advancing social welfare, and the mission of the institution will therefore drive objectives. A key factor to consider is the method of IP protection: patent, trademark, copyright, or trade secret. The costs of maintaining each of these IP categories are different. Although research institutes and companies will likely wish to reduce costs as much as possible, key technologies still need to be protected properly. A company can reduce costs by focusing the patent protection on those geographic areas where it has business. A university can reduce costs by selectively prosecuting patent applications with broad claim structures, strategically licensing technologies, and enforcing patent rights if and when necessary. To build a strong basis of protection, several forms of IP may be used for the same invention or improvement.
Abstract
Protecting New Plant Varieties through PVP: Practical Suggestions from a Plant Breeder for Plant Breeders
by William D. Pardee
Abstract:
A plant variety protection (PVP) certificate preserves a plant variety owner’s exclusive rights to sell, reproduce, import, and export a plant variety and its seed. In addition, a PVP certificate prevents others from claiming PVP or utility patent rights. This chapter walks the reader through the process of applying for a PVP certificate and describes other ways to prevent the unauthorized use or sale of protected plant varieties.
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