4TH REGIONAL PLANT BIOTECHNOLOGY FORUM – 20 October 2011 Commercialisation of Intellectual Property TIA IP UNIT Chyreene Truluck Intellectual Property Analyst

EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6 Transgenic plant Transform plant and Select and screen transformed plants Insert into vector Isolate and amplify gene 5 4 3 1 2 http://www.pcrstation.com/pcr-primer/ http://www.pnas.org/content/97/20/11102.full http://home.cc.umanitoba.ca/~umdemars/PLNT4600/mini3/mini3.1%20(copy).html http://users.comcen.com.au/~biodynamic/pages/what_is_it.html http://ukpmc.ac.uk/articles/PMC117800 http://environmentalwatchman.blogspot.com/2010_09_01_archive.html

USING IP (YOUR OWN OR SOMEONE ELSE’S) TO DERIVE VALUE WHAT IS COMMERCIALISATION? USING IP (YOUR OWN OR SOMEONE ELSE’S) TO DERIVE VALUE

What is your best route to market? How easy is it to enter? COMMERCIALISATION STRATEGY Know the market Which market is it? What is your best route to market? How easy is it to enter? What are the barriers to entry to market? Who are the major players in the market?

IP is an asset which you can: ROUTE TO MARKET Keep rights to yourself Produce product yourself Sell the product yourself OR Use Distributors IP is an asset which you can: Commercialise yourself Sale (Assignment) Lease (License)

COMMON COMMERCIALISATION VEHICLES IP is an asset which you can: Commercialise yourself Sale (Assignment) Lease (License) Assign wholly or part of your IP rights The assignee of the IP will be the owner of the IP

COMMON COMMERCIALISATION VEHICLES Ownership is not transferred to the licensee Owner refrains from suing for limited activities Non-exclusive license Sole license Exclusive license IP is an asset which you can: Commercialise yourself Sale (Assignment) Lease (License)

Will this advantage be sustainable? INTELLECTUAL PROPERTY STRATEGY An IP strategy requires you to think about the process of commercialisation and to determine how and why you want to protect your IP What does this mean? Decide on appropriate type of protection Decide when to protect Decide on territory in which the IP should be protected Consider the cost of protecting the IP Test for IP strategy: Will the strategy enable the technology to have a competitive advantage? Will this advantage be sustainable?

Provided for a limited time period DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT Patents: Provided for a limited time period Initial patent may expire but additional patents may be filed for improvements Plan to licence? May be crucial to attract licensees If IP is still in development phase: file provisional patent application or PCT application

Patent for vector; Trade secret for vector; Trademark for vector EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6 Transgenic plant Transform plant and Select and screen transformed plants Insert into vector Isolate and amplify gene Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals Patent for vector; Trade secret for vector; Trademark for vector Patent for primers, gene sequence, method; Copyright for sequence representations Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2 http://www.pcrstation.com/pcr-primer/ http://www.pnas.org/content/97/20/11102.full http://home.cc.umanitoba.ca/~umdemars/PLNT4600/mini3/mini3.1%20(copy).html http://users.comcen.com.au/~biodynamic/pages/what_is_it.html http://ukpmc.ac.uk/articles/PMC117800 http://environmentalwatchman.blogspot.com/2010_09_01_archive.html

Know-how and trade secret: DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT Know-how and trade secret: Can provide an advantage over competing products or services Inexpensive form of protection…however the value can be lost if the secret or confidentiality is lost Use of this method of protection is often very dependant on the field of the technology Used when an invention is difficult to reverse engineer Useful before filing patent application, especially where to do so is premature If you plan to license know-how may need to provide ongoing support

Patent for vector; Trade secret for vector; Trademark for vector EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6 Transgenic plant Transform plant and Select and screen transformed plants Insert into vector Isolate and amplify gene Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals Patent for vector; Trade secret for vector; Trademark for vector Patent for primers, gene sequence, method; Copyright for sequence representations Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2 http://www.pcrstation.com/pcr-primer/ http://www.pnas.org/content/97/20/11102.full http://home.cc.umanitoba.ca/~umdemars/PLNT4600/mini3/mini3.1%20(copy).html http://users.comcen.com.au/~biodynamic/pages/what_is_it.html http://ukpmc.ac.uk/articles/PMC117800 http://environmentalwatchman.blogspot.com/2010_09_01_archive.html

DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT Trademarks: People like to rely on a trusted brand Brand and protect brand early so when other forms of IP expire customers are familiar with your name sustain commercial activity Plan to commercialise on own at first and then sell company at later stage when its worth more? it is important to build brand and trademark may be vital

Patent for vector; Trade secret for vector; Trademark for vector EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6 Transgenic plant Transform plant and Select and screen transformed plants Insert into vector Isolate and amplify gene Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals Patent for vector; Trade secret for vector; Trademark for vector Patent for primers, gene sequence, method; Copyright for sequence representations Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2 http://www.pcrstation.com/pcr-primer/ http://www.pnas.org/content/97/20/11102.full http://home.cc.umanitoba.ca/~umdemars/PLNT4600/mini3/mini3.1%20(copy).html http://users.comcen.com.au/~biodynamic/pages/what_is_it.html http://ukpmc.ac.uk/articles/PMC117800 http://environmentalwatchman.blogspot.com/2010_09_01_archive.html

Copyright: DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT Inexpensive (Automatic) Only way to protect computer programs as such in South Africa

Patent for vector; Trade secret for vector; Trademark for vector EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6 Transgenic plant Transform plant and Select and screen transformed plants Insert into vector Isolate and amplify gene Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals Patent for vector; Trade secret for vector; Trademark for vector Patent for primers, gene sequence, method; Copyright for sequence representations Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2 http://www.pcrstation.com/pcr-primer/ http://www.pnas.org/content/97/20/11102.full http://home.cc.umanitoba.ca/~umdemars/PLNT4600/mini3/mini3.1%20(copy).html http://users.comcen.com.au/~biodynamic/pages/what_is_it.html http://ukpmc.ac.uk/articles/PMC117800 http://environmentalwatchman.blogspot.com/2010_09_01_archive.html

File for IP protection in these territories DECIDING ON TERRITORY IN WHICH THE IP SHOULD BE PROTECTED AND CONSIDERATIONS OF THE COST OF PROTECTING THE IP When deciding on territory for protection The market is the most important factor Market File for IP protection in these territories Weigh up cost of protecting against value of IP and company (actual and potential value) IP strategy should take into account changing value of IP over time Patent close to expiry not as valuable as at outset Prior to filing patent applications: know-how and copyright are your biggest asset

Patent for vector; Trade secret for vector; Trademark for vector EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6 Transgenic plant Transform plant and Select and screen transformed plants Insert into vector Isolate and amplify gene Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals Patent for vector; Trade secret for vector; Trademark for vector Patent for primers, gene sequence, method; Copyright for sequence representations Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2 http://www.pcrstation.com/pcr-primer/ http://www.pnas.org/content/97/20/11102.full http://home.cc.umanitoba.ca/~umdemars/PLNT4600/mini3/mini3.1%20(copy).html http://users.comcen.com.au/~biodynamic/pages/what_is_it.html http://ukpmc.ac.uk/articles/PMC117800 http://environmentalwatchman.blogspot.com/2010_09_01_archive.html

Refrain from exercising rights HOW DO YOU OBTAIN VALUE FROM YOUR IP? Keep rights Transfer rights (Assignment) Refrain from exercising rights (Licence) Leverage IP rights…

LEVERAGING IP RIGHTS Obtain a cross licence for someone else’s technology in exchange for your own Attract further investment Attract commercialisation partners

The IP strategy must be aligned with the commercialisation strategy

Thank You Questions???