Lab-based scientists may not be able to access their workspace during lockdown, but there are things that can be done remotely to further their IP programme. In part one of our series, “Progressing innovation outside the lab”, Appleyard Lees partner, patent attorney and chemist Kate Hickinson outlines tasks that chemistry-focused researchers and scientists, ordinarily based in labs, can complete during their time at home. The article provides six strategic tasks that will further chemistry-related intellectual property during COVID-19 disruption.
Perspective from a chemist and patent attorney
Kate Hickinson is an Appleyard Lees partner, chemist and patent attorney. Kate handles all types of chemical subject matter and has considerable experience and expertise in the pharmaceutical area having worked in-house at AstraZeneca for several years.
As a patent attorney working in the chemical field (both pharmaceutical and industrial chemistry) many of my clients have suddenly found themselves working at home due to COVID-19. Whilst that is something I am quite used to – all I need is my laptop and I can easily work at home as our files and systems are electronic – obviously laboratory based scientific researchers cannot currently work as usual. This led me to consider how such researchers could make good use of their time working from home from an IP perspective.
Task one: review results, consider research & examine IP strategy to identify patentable inventions
Often our clients tell us they find it difficult to take time out of the laboratory to review their results and consider their research and IP strategy. Now seems like a great time to do this. Time spent reviewing results and strategic goals could lead to the identification of patentable inventions. For example:
- If you have synthesised a series of compounds, do you now have time to consider their structure activity relationship in detail?
- Have you conducted prior art searches to ascertain whether all the compounds synthesised are novel
- If some or all the compounds are not novel per se, have you found a new use for them?
- Have you combined two or more known chemical entities to produce a new formulation to overcome a technical problem?
To be patentable, an invention must be novel and inventive. As well as protecting new compounds with a patent, it is possible to protect new uses of known compounds, as well as new formulations and combinations of chemical entities.
Perhaps reviewing your results with fresh eyes during your time away from the laboratory will enable you to identify patentable subject matter, or new avenues to take with your research when you can return to the laboratory.
Task two: identify examples for future patent applications
One question we are often asked is “How many examples do I need to file a patent application?”. There is no simple answer to this question, as the answer depends on a multitude of factors. In the chemical field at least, we would always recommend having at least one (and preferably more) worked example to support a patent application, but you may consider drafting and filing a patent application with a limited number of examples.
To be patentable, your invention must be sufficiently disclosed, i.e. disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. This doesn’t always mean that large numbers of examples are required, at least for the initial filing, as further examples can be added at the end of the twelve-month priority period when further filings are made. A patent attorney can help you to review your results and advise on whether you have sufficient examples and/or associated data to support a patent filing, whilst also helping to plan what additional work could be conducted to supplement the filing in future.
In relation to examples, in my experience, giving a patent attorney a well-written set of examples at the start of the patent drafting process is very advantageous. It allows an attorney to draft claims with full knowledge of the examples the claims must cover and ensures that all parties are clear on this. Of course, we typically want to protect more than what is shown in the examples, but we must ensure that the examples are covered by the claims and that the description properly supports what is shown by them. Clarity on this at the very beginning of the drafting process can reduce drafting time and minimise costs. Now could be a great time to write up examples that might be included in a patent specification and could highlight where further work is needed to finalise them.
Task three: consider novel approaches to research
If you cannot make it into the laboratory for a lengthy period, perhaps new approaches to research may be required. It could be time to consider computational simulation. Computational results could be used to supplement ongoing experimental work or to provide new research directions. It should be noted however that the claimed invention should provide a technical effect in the real world and so complete reliance on computational data should be avoided.
Task four: get ahead with existing patent prosecution
If you have ongoing patent cases, perhaps now is a good time to review and get ahead with ongoing prosecution. We could provide you with details of the status of your patent families and upcoming deadlines, if you would like to do this.
Task five: research third-party rights
As well as considering your own inventions, now might also be a good time to consider third-party rights. Having a patent does not mean that you are free to use the claimed invention. It is always necessary to consider freedom to operate and whether your proposed commercial product may infringe a third-party patent.
A question we are often asked is, “When should freedom to operate be assessed?”. Again, there is not a simple answer to this question. If freedom to operate is considered too early, there may not be sufficient detail on the final product to conduct meaningful searches and/or to usefully assess potentially relevant patent property. However, if left too late, lots of time and money may be spent pursing an invention which is protected by a patent belonging to a third party.
Now could be a good time to assess research and commercial plans to ascertain whether any freedom to operate analysis needs to be done. If such analysis is conducted and identifies potential issues, a patent attorney can help plan a way forward, whether that is by watching a pending patent application, considering the validity of and potentially opposing a granted patent or negotiating a licence agreement with a patent holder.
Task six: research competitors’ patent activity
Another action to consider is patent landscaping, to obtain an overview of your competitors’ patenting activity. As patents are typically filed for those inventions considered to be commercially valuable, patent landscaping can give insight into your competitors activities and strategy. This may assist your own strategy and perhaps identify “free space” to identify potential new areas of research.
Our attorneys continue to offer practical guidance on the effects of COVID-related disruption on IP. Follow us on Twitter (@Appleyardlees) or LinkedIn, or visit appleyardlees.com for our latest insights released regularly.
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