commercial aspects of patents

Commercial aspects of patents-Challenges faced by Scientists : 

Commercial aspects of patents-Challenges faced by Scientists Karanam Swathi (M.pharm) Pharmacognosy Nethaji Institute Of Pharmaceutical Sciences

Intellectual Property Rights ?! : 

Intellectual Property Rights ?!

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Goals and Objectives:Principal Investigator Long-term relationship Multiple sponsor relationship/consortium Timeframe Overall research program Pending research projects

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Goals and Objectives: Company Partner Past relationship What do they expect? What will they contribute to research project? Timeframe Company position and likely strategies

Patents ?! : 

Patents ?! No time for patenting No resource for patenting Patents are not as reputed as publications I have a product in market making money, why should I patent?

Excuse me- I missed my patent : 

Excuse me- I missed my patent Hippocrates : Powder from willow tree provides pain relief 1826- 1830: Active compound obtained, purified but caused severe acidity 1853: Neutralised by Gerhart did not patent 1899: Hoffman rediscovered and gave to his company Bayer 1900: Patented 1915, 1948, 1971 : patents for tablets, for curing heart attacks and for prostaglandin inhibition WE KNOW THIS DRUG AS ASPIRIN Gerhart Lost 50 billion dollar for want of protection

CAPITALISING YOUR IDEA ! : 

CAPITALISING YOUR IDEA ! Runaway boy from Chennai who landed in Mumbai Delivering tea - hand cart selling South Indian Food – Restaurant Chinese restaurant which flopped Mélange : Chinese- South India 104 varieties – 25 original: American chopsuey, Schezwan, Spring Roll NAME OF ALL DOSA PROTECTED UNDER TRADEMARK DOSA PLAZA- RAGS TO RICHES STORY

Myths about IP : 

Myths about IP It gives us world-wide rights It will keep everyone else from competing with us The government will give us money as a reward Competitors will come to us to get a licence We MUST have it It’s expensive Only for major research breakthroughs Only for complex or advanced technology

Truth about IP : 

Truth about IP It does NOT give the right to make the product It does NOT give world-wide rights It will NOT keep everyone else from competing The government will NOT give money as a reward Competitors will (probably) NOT come to get a licence You do NOT necessarily have to have it It is expensive – but compared to…..?!!

Patenting : 

Source: NSF Science and Engineering Indicators, 2002. Patenting

Should we patent All? : 

Should we patent All?

If patenting out cost the your research : 

If patenting out cost the your research

If the invention is not kept a secret until the date of filing : 

If the invention is not kept a secret until the date of filing

If the invention is not new : 

If the invention is not new

If the inventor has not fully investigated the case : 

If the inventor has not fully investigated the case

The inventor has an unrealistic idea of the value of his invention : 

The inventor has an unrealistic idea of the value of his invention

Patentability criteria : 

Patentability criteria Indian patents Act- 1970 (as amended in 2005)- Section 2(1)j New product or process involving an inventive step and capable of industrial application Inventions not patentable in India –Section 3 frivolous, contrary to morality, mere discovery, new form of known substance, agricultural processes, business methods, computer programmes, method of treatment

Patents : 

Patents A patent describes an invention for which the inventor claims the exclusive right. Invention is a new solution to “technical” problem. (product, process and new use) It must be new Have an inventive step Be Industrially applicable

What would you Patent? : 

What would you Patent? Utility An invention Solved a problem Make a known device better, i.e. Improve it. A new drug, a recombinant microbe A new hardware Design

Types of subject matter : 

Types of subject matter Path-breaking concepts /real innovations/drug discovery Composition of matter (Mixtures/chemical composition) Instruments/Articles Process Drug delivery system (DDS) Micro-organisms and microbiological processes processes for producing new-microorganisms through genetic engineering and the products that result out of this process (must be non-living) Cell line and hybridoma if artificially produced Nanoparticles

IS PATENTING THE ONLY SOLUTION? : 

Patent Trademark Copyright Design Registration Trade Secret Geographical Indications IS PATENTING THE ONLY SOLUTION?

What would you Copyright? : 

What would you Copyright? literary works (e.g., all text, including computer software) musical works dramatic works choreographic works pictorial, graphic, and sculptural works motion pictures and other audiovisual works sound recordings architectural works

What would you Trademark? : 

What would you Trademark? TRADEMARKS protect the unique name, design, logo, symbols or colors used by a business to identify their products or services.

Registration helps : 

Registration helps Use of the word “Zhandu” balm Zhandu Pharmaceuticals Company sued the producers as they have used the trademark MALAIKA IS BRAND AMBASSADOR

What is a Trade Secret? : 

What is a Trade Secret? Formula, pattern, business information, customer information, methodology, strategic plans, etc. Commercial value Unlimited duration as long as secret

Example of Trade secret : 

Example of Trade secret Formula well kept trade secret Only known to few executives If found guilty Sentenced for 8 years along with fine

Geographical indications : 

Geographical indications associates a good with a territory/ region/locality quality, reputation or other characteristic attributable to origin Basmati rice, champagne, Darjeeling tea, Kaancheepuram saree

Non-disclosure Agreements : 

Non-disclosure Agreements Involves signing a formal document which clearly identifies the intellectual property. Enables business and commercialization evaluations prior to open publication. Often has some time limit. Difficult to prevent “leakage” by non-signatories.

– Do Not – Do Any of the Following : 

31 Display or discuss the invention at a seminar, lecture, workshop, poster presentation or trade show open to the public, or Disclose the invention on inventor’s or University’s web site, or Submit an article to a journal for publication, or – Do Not – Do Any of the Following

– Do Not – Do Any of the Following : 

Offer for sale or sell the invention, or Distribute samples of the product to customers or collaborator, or – Do Not – Do Any of the Following

Please Do the Following: : 

Please Do the Following: Consult with an IPR expert before any public disclosure of the invention. Stamp “CONFIDENTIAL” on every page of the technical portion of any grant proposal. Use laboratory notebooks.

IP IN A PRODUCT : 

IP IN A PRODUCT TM Patent © Design

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Thank you