Session 2: Intellecutal Property – Securing my Science
Speaker: Harriet Wilson – Patent Attorney, Baldwins IP
Chiasma’s role is to educate our young scientists and bioentrepreneurs in the field of biotech innovation and commercialisation. This particular session served to portray the importance of IP in the research lab making students aware of how to safeguard their research, the consequences of disclosure and the role IP plays in bringing their science from the bench to the patient.
Below is a collection of my notes from the seminar which particularly focused on patents.
Types of IP protection – Patents, Trademarks (registered and common law), Designs, Copyright and the Fair Trading Act.
- Reward Creativity
- Encourage Innovation
- Contribute to economic development, Improving the standard of life, new choices for consumers while safeguarding public interest
- Promotes disclosure of an invention e.g. how to make it
- Encourages the commercialisation of research by providing an incentive to do so
- Gives a monopoly right to allow a financial return to be made
- Can stimulate collaboration
- Can direct research
NZ process of patent filing
- Provisional application at priority date – brief description, not alot of evidence is required at this stage. Disclosure after this priority date is permitted. However if improvements in a product/technology are made after the provisional registration and are disclosed this can actually invalid the prior claims made in the original specification.
- A period of 12 months is allowed for the inventor to file the full patent specification
- Patent is examined and revised over 15 months In this process Harriet mentioned that it is not uncommon that IPONZ advisers that the patent be ‘narrowed’ in terms of what the patent covers. On the other hand owners of the IP want to capture the broadest view. Typically a compromised is reached. This is followed by a 3 month window after publication to allowed opposition to come froward.
- 3 months after its acceptance, the patent is issued.
Because patents are territorial and the market of a product typically involves not only NZ, international protection is also sought through either filing in each region/country or more commonly filing a PCT application.
What is protected in patents ? – new product or process, improvements, methods of using product, biotech matters e.g. DNA, new therapeutic uses/applications (cannot patent the method of treatment of a disease or else every doctor would be infringing)
While in the lab …. – report new developments in your work to your PI, do not disclose results until protection is sought, keep accurate lab books.
- As part of the session we analysed the Intellectual Property integrated into the Waiwera Infinity Glass Water Bottle which won ‘Best Glass Water Bottle” in 2006 and ‘Best Water’ in 2008
It actually surprised me to see the amount IP incorporated into one ‘ bottle of water’, some more obvious than others.
- Registered Design of bottle
- Trademark of the bottle shape/design – this cannot be descriptive or functional, typically for aesthetics only eg the 420 water bottle which has ridges/ ripples on the side of it. Because TMs have an unlimited lifespan (unlike patents), this restriction ensures that a beneficial aspect of a product is not monopolised and kept from consumer use. However there is a loop hole. If enough evidence can be produced, a functional/ descriptive TM on design can be pushed through.
- TM – Waiwera Infinity logo, however it appears that they have TM’d a different brand name. Instead of ‘ WAIWERA INFINITY’ , the logo ‘WAIWERA ARTESIAN’ has been protected. Another abnormality in the TM registration is they have protected the whole logo ( including colours, fonts, integrated graphics all in one) as opposed to simply the text in black and white block letters. The latter offers stronger protection.
- Patents – Process of making the bottle, unique equipment used for its construction.
- Design of Cap – however is not a unique cap.
- Copyright – photo on the attached tag, in addition to TM the logo is also copyrighted, all press releases and advertising are copyrighted.
Session 1: Precommercialisation – Will my Science Sell?
Speaker: Dr. Kerry Loomes – Nerian & UoA
Kerry spoke about his experience in Transgenic cows for the production of lipases in milk for babies, his involvement with Protemix where he undertook a structure based approach to discover a compound to inhibitn a inositol depleting enzyme in the kidney and finally Nerian, a new startup (runner up in the Spark 40K in 2007) focused on commercialising natural ‘active’ extracts from grapes. These extracts will be targeted towards the nutraceutical field.
Take away notes:
- ‘Patents are simple a ticket to play the game’
- Should a drug be taken forward ?? – Can make money back in 2 yeas on the market – e.g. Zenatide
- Interesting fact #1: basic research grants – the bodies that judge grants do not conduct patent searches in the proposed research area/field. Are we doing free research for a large corporate ?
- Innovation – Pharma conducts mass genome/proteome/transcriptome/ epigenome/ metabolome screens so have the all big paradigms covered. You need to think about a completely new hypothesis
- ‘hard to find new ideas – lots of literature to search through
- in NZ we are having good ideas put against each other. bidding for the same limited amount of research funding. Despite a lot of proposals receiving great scores this is not rewarded
- Because of this scientists should be working towards the same goal rather than competing.
- too much of a researchers time is spent grant writing