Exam Questions – Patents and
Innovation
Introduction, IP rights, Patent Rights an Patent Systems
You have developed a new kind of hair gel which is particularly
effective. You want to sell it to young people. How will you go
about developing your product and what aspects can you protect.
First I will do a prior art analysis to determine my
Freedom-to-Operate, to ensure my formulation,
branding, or methods don’t infringe on existing patents
or trademarks. I will look for patents of 3th parties that
might be able to stop me from carrying out my
commercial activities. In this way I can assess whether
or not my innovation can be patented. (Novely,
Inventive step, Industrial application)
If my innovation wil not infringe excisting patents or trademarks, I can
start looking for protection of my innovation in the countries/regions I
want to commercialize my product. I would protect different IP aspects of
my product.
1. Patent rights (20y)
I will protect the unique formulations, when my hair gel has a novel
chemical composition or processing method not already known.
If the method for producing the gel is unique and offers advantages, I
will patent it separately.
If my gel uses a compound for a new application, this could be
patentable.
(Novel use of an existing compound)
2. Trademarks (10 y, can be renewed)
I will protect the brand name, logo, and tagline (slogan) that I will use.
3. Copyright (70y)
I will also protect the creative design, original text, lay-out of the
package (Packaging artwork). Creative materials like my advertising
visuals, product labels, or jingles I will also protect. The leaflet’s written
instructions, design, and any creative content (e.g., illustrations,
diagrams, or layout) are automatically protected by copyright law as
soon as they are created, provided they are original.
4. Trade-secrets
I will keep my exact formulation (not always possible), processing
methods (not always possible), or sourcing details confidential. I will
, use non-disclosure agreements (NDAs) with partners and suppliers to
maintain secrecy.
You and your colleagues at the University developed a new kind
of cream which can be used to cure skin problems. The nature of
the cream is such that it works better if it is delivered in a
specific type of system in a tube for delivery. You would like to
make your product attractive to the young adults with skin
problems. What would you do to avoid that competitors copy your
invention and come onto the market with a comparable product?
I would protect my Intellectual Property by using different IP right.
1. Patent Rights (20y)
The claims in my patent define the scope of the protection. They
describe what my patent covers and whay I can stop others from
commercializing. I will try to draft these claims as broad as possible, so
that variants of the same product will also be covered. For each type of
claim (product and process), I will add a first ‘independent’ claim and
thereafter a number of dependent claims, which introduce additional
features.
a) Use of Product Claims
- Formulation of the cream
- Delivery system
If both the formulation of the cream and the delivery system are new
and original is would these produt claims. This type of claims cover any
and all uses of the product.
b) Use of Method (Process) Claims
- Application of the cream using the delivery system
- Production of the cream
By using these claims, third parties are prohibited
from:
o Manufacturing, Offering, and Using of the products
o Delivery of Means to Implement the Innovation/Process
o Use of the Process
o Selling, Using, and Supplying products made by the Process
2. Trademarks (10y)
I will protect the brand name, logo, and slogan associated with the
cream, ensuring that competitors cannot imitate my branding.
3. Copyright (70y)
I will also protect the creative design, original text, lay-out of the
package (Packaging artwork). Creative materials like my advertising
visuals, product labels, or jingles I will also protect. The leaflet’s written
, instructions, design, and any creative content (e.g., illustrations,
diagrams, or layout) are automatically protected by copyright law as
soon as they are created, provided they are original.
4. Trade-secret
I will use non-disclosure agreements (NDAs) with partners and suppliers
to maintain secrecy.
You have identified a ligand which binds to what was previously
considered an orphan receptor. You have plans to:
- Develop this molecule as a therapeutic agent for treatment
of diseases involving this orphan receptor
- Identify alternative chemical compounds which bind this
orphan receptor using the assay based on your protein
- Set up a spin-off on these therapeutics
What aspects can an IP search help you with?
PRIOR ART CHECK
This ensure the ligand, its structure, or its use with the orphan receptor is
novel. The search can confirm whether: the receptor itself has been
patented or similar ligands have already been disclosed or patented for
therapeutic purposes.
Also check whether there are existing IP for similar assays. I can check
whether the assay methodology I plan to use for identifying alternative
compounds has already been patented.
FREEDOM-TO-OPERATE (FTO)
This can help me in finding patents of third parties that could stop me
from carrying out my commercial activities and thus restrict my ability to
use the ligand or receptor for therapeutic purposes without licensing
agreements.
COMPETITOR ANALYSIS
I can use IP searches to evaluate competitors working on orphan receptor-
targeted therapies. This information helps position my spin-off
strategically.
It can also help me Identifying patents that my spin-off could license for
complementary technologies or compounds. (licensing oppurtunities)
, Aligning the Patent System with Innovation
You want to apply for a patent but aren't sure in which countries
you would like to apply. How do you buy yourself some time to
think this over?
USE THE SYSTEM OF PRIORITY: PRIORITY FILING
The Paris Convention 1883, is a treaty on the protection of IP that
regulates a number of important aspects. Almost all countries have signed
this treaty. The most relevant provision of the Paris Convention for
practival purposes is the “right to priority”. This principle ensures that a
person applying for a patent on a given day in one of the member states,
will enjoy, during a period of 12 months from that day, the right to apply
for the same IP protection in another member country, while maintaining
the filing date of the first filing.
This means you can apply your patent application in your
national/regional patent office (PO) and then you have 12 months from
this filing date to decide in which other countries you’d like to apply.
USE OF AN INTERNATIONAL PATENT APPLICATION: PCT ROUTE
The Patent Cooperation Treaty (PCT) is a treaty which was aimed at
harmonizing patent application procedures in different states of the world.
The PCT system is headed by the International Bureau (IB). In practice,
different national/regional patent offices will act as “receiving office” of
the international patent and will act as International Examination
Authority.
An international patent is never granted, after the interantional phase, the
applicant must enter into national/regional phase in the PCT contracting
states of interest to the applicant. The application will then be examined
by the national/regional patent offices selected. BUT because of the
harmonized procedure, the formalities upon entry into the national phase
are less complex then if you would not use the PCT system. Also the
International Search Report is used as a basis by local patent offices for
determining whether or not the claims of the patent application are
patentable.
