Patents and other IPR for researchers

PART 1
November 23 and 24, 2021 • from 9:00h to 13:00h

Introduction

• The myth of the inventor as a solitary genius: PCR vs. CRISPR-Cas9
• Misunderstanding on patents: ‘waiving’ patents on COVID-19 vaccines (particularly the BioNTech one)
• Role of patents and regulatory marketing exclusivity in prices of hepatitis-C treatment with Sovaldi® (sofosbuvir)

1. IPR as Economic Intangible Assets

• Protection against imitation of information associated to economic investment
• Different Intellectual Property Rights (IPR) for protecting different kinds of information, with different durations and characteristics. Priority rights
• Intangible assets that can be transferred

2. Overview on ‘Non-technological’ IPR

•  Copyright and neighboring rights’ as protection of all kinds of creative works, including computer programs and databases
•  Trademarks (national, ‘international’, and EU) as protection of distinctiveness
•  Industrial Designs (national, ‘international’, and EU) as protection of external appearance, separated from function

3. Know-How and Business Information

•  Know-how as a protection of technology by keeping it confidential
•  (Lawful) reverse engineering vs. (unlawful) industrial espionage
•  Brainstorming about how to protect our own technology: pros and cons of patents vs. know-how
• Non-disclosure agreements (NDA) and people tacitly bound by secrecy

4. Protection of Inventions: Patents and Utility Models

• Protection of technology by property titles: how a discovery gives rise to a patentable invention, and how can patents help your business
• What to do first when you think you have a patentable invention: no conflicts between patenting and publishing
• Patentability requirements: technical character, eligibility, novelty, inventive step (non-obviousness), enabling disclosure, etc.; peculiarities of utility models
• Special requirements of biotech inventions
• The reason behind the patent system

5. How to Read a Patent: Description and Claims

• How a patent application is drafted with the help of a patent expert
• Comparison between a full paper and a patent document
• A patent claim as a defining sentence of a set of technical subject-matter
• Rights conferred by a claim depend on its type: product/entity, process/method/activity, and process to obtain
• Drafting and infringement of a standard (open-ended) claim
• Drafting and infringement of a Markush (closed-ended) claim
• Claims written with dependency and/or definition references

6. Company Patent Policy: Filing and Prosecution

• Deciding what is worth being patented: role of patents in different fields of technology
• Where (i.e. in which countries) to invest in trying to get patent protection, based on market size (GDP), enforcement, prosecution and cost
• How to get patent protection in several countries: priority filings; filing a PCT (international) application to keep open the possibility of patenting; entering the PCT into the European Patent Office (EPO) and into national offices
• Typical patent procedure in an IP5 office: US, EPO, China, Japan and South Korea
• The future European Patent with Unitary Effect, and the Unified Patent Court

7. Patent Enforcement

• Jurisdictions
• Direct vs. indirect infringement; literal vs. non-literal claim interpretation
• Infringement exemptions: the public, medical & veterinary doctors, pharmacists, experimental acts, etc.
• Dispute resolution: litigation vs. arbitration

8. Ownership vs. Inventorship

•  Who are inventors: conception and reduction to practice
•  Inventors’ rights: private (‘backyard’) inventions vs. labor inventions (by employment or contract)
• Co-inventorship and co-ownership
• Academic inventors and their rights to participate in benefits.
• Avoiding typical inventors’ errors

9. Making Money out of Patents and Know-How

• Negotiating technology transfer
• License, assignment and option agreements
• Valuation of the commercial interest of an invention: “the 25% rule”
• Non-disclosure agreements (NDA) and material-transfer agreements (MTA)

10. Patents as Information Source

• Patent documents as the largest source of technical (not scientific) information: exclusive and free-of-charge
• Codified information on front pages of patent documents, and kinds of documents: A, B, T
• IP Due Diligence and Freedom-To-Operate
• How to find patent documents: patent classification, CAS-SciFinder & Espacenet databases

Note: Approach will be international. All IPR will be illustrated with real cases. There will be examples of patents from most technical fields: electromechanics, chemistry, pharmacy, biotechnology, computer-implemented inventions, etc.
 

PART 2
November 26, 2021 • from 9:30h to 12:30h

All people attending the first part of the course will have access to this second part. It will be imparted by some KTT representatives from the BIST centres, and will showcase some real examples of innovation happening in them.