How can a patent attorney add value to your university collaborations?

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Whether you are a lone entrepreneur, or acting on behalf of an SME or a large multinational company, having the right patent attorney to help you navigate your way through the Intellectual Property (IP) minefield is essential when embarking upon a knowledge transfer project.? This is particularly the case when it comes to university collaborations, due to the often sophisticated nature of the technologies concerned and the complexities of issues relating to ownership, licensing and portfolio management that can arise. Therefore, when choosing a patent attorney to assist you with such collaborations, it is important to check that they have experience of working with academics and university technology transfer executives. At Venner Shipley we have this experience, and so can help protect not only your IP rights, but also those of the university, thereby strengthening the collaboration, and making it a profitable business venture for all parties involved.

A patent attorney has a background comprising a mix of both scientific and legal training.? Entrants into the patent profession must have, as a minimum, an undergraduate degree in a scientific or technical discipline, although many patent attorneys have postgraduate experience.? This scientific background, which is a prerequisite for entry onto the register of both the European andUnited Kingdom patent institutes, ensures that your patent attorney is uniquely placed to appreciate the complex, technical aspects of your invention.? After entry into the profession, patent attorneys must then complete a minimum period of legal training (typically three to four years) before sitting rigorous professional examinations. ?Upon qualification, patent attorneys can therefore advise you in matters relating to all areas of IP, which includes patents, trade marks, design rights and copyright, as well as providing specific expertise on matters such as collaboration agreements, licensing and assignment of intellectual property rights, and patent portfolio management.?

Even before a draft patent application defining your invention is prepared, it is important to ensure that the inventorship and ownership of the invention is clearly defined and, for this reason, it is often sensible to involve a patent attorney from the outset, to help protect your interests. Ownership of IP rights can be a divisive issue, particularly where collaborative projects are concerned, since ownership may be rightfully shared across a number of different parties often having conflicting interests in the invention.? Accurately designating the ownership of such inventions can be complicated, and it is therefore important to resolve these issues before filing a patent application order to avoid potentially significant and costly complications later on.

Once these preliminary issues have been resolved, a patent attorney will usually begin by drafting a patent application describing your invention.? A patent application is a complex legal document that must comply with a number of formal and substantive requirements, in order to produce a valid patent which will, when granted, protect your invention.? When carefully drafted, your patent application should cover both your current and any proposed commercial products, and be broad enough to cover minor or obvious modifications in order to act as a deterrent to potential competitors, while excluding things which have been done before. Your attorney will liaise with you, the academics and the university technology transfer executives in order to ensure that the patent application is drafted in such a way so as to meet these goals and therefore be commercially relevant.? Such a patent application should also prove attractive to a potential funding partner, thereby facilitating negotiations with third parties.? At Venner Shipley, we have a considerable amount of experience in helping university technology transfer offices and their collaborators to attract funding through their patent applications. ?

In order to obtain a valid patent in most countries of interest, the invention, as defined in your patent application, needs to meet three key requirements at its date of filing. Firstly, it must be novel.? This means that your invention must not have been made available to the public anywhere in the world, by any means, prior to the filing date of your patent application. An important aspect of novelty, therefore, is that your invention must remain strictly confidential until your patent application is safely on file. Secondly, the invention must exhibit an inventive step, in the sense that it must not be merely an obvious development of what already exists in the public domain. If your invention exhibits any surprising advantages over known technology, then it is likely to involve an inventive step. Lastly, the invention must be susceptible of industrial application.? This means that your invention must have utility in some kind of industry, or in agriculture. Your patent attorney will take these three criteria into consideration while preparing a draft patent application describing your invention.

These three requirements will ultimately be assessed by the relevant patent offices during examination of your patent application (also known as ?prosecution?). In order to assess the patentability of your invention, therefore, each patent office will typically conduct a search of patent and scientific literature in the field of your invention, in order to determine what was known at the time of filing your patent application. This so-called ?prior art? will then form the basis of the patent examination. In order to better understand how your patent application is likely to be viewed, therefore, your patent attorney might suggest conducting a novelty search prior to filing your patent application to look for any such information which could negatively impact on the patentability of your invention, and to advise you on the potential implications for the scope of protection that you can expect to achieve.

In addition to these substantive requirements, a patent application must also meet several formal requirements, which, again, your patent attorney will bear in mind when preparing your draft patent application. For example, the patent application must contain enough information to describe the invention in sufficient detail so that it can be repeated by a third party without them have to exercise their own inventive endeavor. Furthermore, it must be plausible that the technical advantages ascribed to your invention can be achieved on the basis of the information included in the patent application on the date it is filed.? Your patent attorney will therefore carefully consider whether you have generated enough data to support the claimed invention as formally required.? Sometimes, it may be prudent for you to wait for a period of time before filing your patent application, if your attorney believes that more data should be obtained first. Timing is critical, because filing either too soon or too late can, under certain circumstances, put the validity of your patent application at risk, thereby compromising its value.

Once the wording of your draft patent application has been agreed, your patent attorney will then file it at the patent office.? Depending on your commercial interests, this may be the UK Intellectual Property Office or the European Patent Office (or even, in certain cases, a patent office in another jurisdiction, such as theUnited States).? The filing date of your patent application is all important, as this is the date at which the relevant patent offices will determine whether your application meets the substantive requirements for grant.? This essentially means that any prior art which was filed after your filing date, will not be relevant for determining the patentability of your invention.? Therefore, once your patent application is safely on file you can disclose your invention to third parties, in an attempt to gain interest in, and generate revenue via, the technology.

Patents are territorial in nature, and so, in order to protect your invention in other jurisdictions, it is necessary to file a patent application in each country of interest.? In order to allow patentees sufficient time in which to do so, any qualifying patent application for the same invention which is filed within 12 months of your initial UK or European patent application can claim ?priority?.? This means that, subject to compliance with the priority provisions, the later foreign applications will benefit from the filing date of the initial application and, as for the initial application, any prior art published in the intervening 12-months, will not be relevant to the patentability of your invention.? Extending an initial application to other territories is generally done in one of two ways: either by filing national patent applications directly in the other countries of interest, or by filing an international patent application under the Patent Co-operation Treaty (PCT).? There are a large number of factors to be taken into account when deciding which of these routes to follow, and therefore this decision should always be made in conjunction with strategic advice from your patent attorney.?

Once your patent application has been filed, the various national patent offices will search and examine it in order to assess whether or not your invention is indeed novel, inventive and industrial applicable, and many patent offices will also judge your patent application for the sufficiency and supporting data requirements. At this stage, your patent attorney will report the official search and examination reports to you, and advise you on the impact that any cited documents may have against your patent application. Using a clear understanding of your commercial drivers, your attorney can then suggest amendments that may need to be made to the wording of your patent application in order to distinguish your invention over the cited prior art, with the aim of achieving the broadest possible scope of protection, while ensuring that this still covers your commercial products. This ?negotiation? with the patent offices usually involves only written communication, but for more complex cases, it can require an interview or formal hearing with the patent office examiner or an examination board, at which arguments in support of the invention?s patentability can be orally submitted.

Finally, once a consensus on the scope of protection afforded by your patent application is reached with the patent office, your patent will then be ready for grant.? By this time, it is hoped that either you and/or the university will have found a way of making money out of the invention. For example, revenue could be generated by selling the patent outright to a third party, or, alternatively, the technology could be licensed under the patent, to one or more competitors in exchange for licensing fees. At Venner Shipley, we are also skilled in drawing up detailed IP reports, which describe your IP portfolio, and can be used to attract potential investors and/or business partners.

The role of a patent attorney does not end when your patent is granted, however. For example, as time goes by, you may further develop your invention, and it can often be advantageous to your business to also protect these refinements. Your attorney will advise you on the patentability of the developments, and ensure that they are adequately protected by filing one or more subsequent patent applications, which more specifically define your commercial products.? Additionally, filing so-called ?improvement? patents can extend the length of patent protection and avoid a dramatic slump in revenue at the end of patent life.

In addition, when a commercial product is particularly successful, third parties may try to take advantage of the underlying concept on which your invention is based by selling a competing product. In such situations, you will need your patent attorney to advise whether or not that competing product falls within the scope of your patent, i.e. ?infringes? your patent in a certain jurisdiction. In the event that your patent is being infringed, your attorney can take steps to restrict the actions of the infringer, for example by taking action before the Patents County Court (PCC) in the UK to obtain an injunction and/or damages from the infringing party. For more complex cases, patent attorneys often work in conjunction with IP solicitors and barristers to take action in the High Court, and your attorney can instruct and liaise with these specialists on your behalf. If legal action is to be taken in another jurisdiction, your foreign patents can be litigated by local IP professionals, again under instructions from your patent attorney.

Alternatively, you may wish to determine whether your own product risks infringing any third party patents (whether or not your product is protected by a patent) before bringing it to market.? In such a scenario, your patent attorney can search for competing patents, and advise you whether or not your activities would be likely to constitute an infringement, if litigated. If it is likely that it would infringe a competitor?s patent, your patent attorney can assist you in taking pre-emptive action, for example by carrying out due diligence on that patent in order to determine whether or not it is valid. Your attorney can also propose tactics for having the earlier patent invalidated or restricted, or, if necessary, help you to negotiate a deal with the patentee in order to enable you to legally bring your product to market.

In summary, it is vital that you choose the correct patent attorney to join you on your voyage of collaboration with a university. They need to have the relevant scientific background so that they can understand your invention, be experienced in dealing with academics and university technology transfer departments, and have the ability to give complex legal advice using jargon-free language. At Venner Shipley, we have a large team of professionals with a wide range of scientific backgrounds who meet all of these requirements, and who can, most importantly, ensure that you maximize returns on investments in your IP portfolio.

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Source: http://obrreview.com/2012/how-can-a-patent-attorney-add-value-to-your-university-collaborations

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