1. Bridging the Gap Workshop
A Guide to your IP Handbooks
Dr Renee White
Peter Doherty Fellow
Trainee Patent Attorney
May 2016
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5. + Lessons Learned from the ‘Other Side’
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+ Lessons Learned
from the ‘Other Side’

6. + What is a patent {page 4}
a legal and technical document
Legal (claims) = define the boundaries of the monopoly right
Technical = must fully disclose how to make or use the invention to enable the skilled person to perform the invention without the need for further invention
+ Why do I need one?
monopoly right granted to its owner
Typically 20 yrs exchange for public disclosure of the invention
prevents others from exploiting the invention without the owner’s permission
License / Sell / Commercialise your invention

7. + What are the requirements for a granted patent {page 6 – 7}
Patentable Subject Matter
Non-eligible subject matter:
Mere discoveries
Ideas
Theories
Laws of nature
Human beings and biological processes for their generation
nucleic acid sequence which convey the same information as a sequence of nucleotides in the genome of an organism, plant or animal (DNA and cDNA) (Myriad)
Science is more than just the experiments
Grants
Politics

8. + What are the requirements for a granted patent {page 6}
Novelty
New
No public disclosure in any form
(sale / public use / posters / conference abstract / grant applications?)
Worldwide
Before priority date – filing date of first (provisional / complete) application
Science is more than just the experiments
Grants
Politics
Inventive Step
Obvious to what was already known
If a skilled person (YOU) were confronted with the same problem, would you arrive at the same solution?

9. + IP Inventorship & Ownership {page 19}
The invention could not have been made in their absence
Materially contributed to the development of the invention
Not an Inventor
Merely working to someone else’s direction
Carried out a series of trials according to a method previously established in the lab
Provided only financial contribution
Science is more than just the experiments
Grants
Politics
Owner
Employed or paid to carry out investigative research as part of your employment duties; Employer = Owner

10. + Patenting Process {page 13 – 15}
$4,000 - $8,000
$1,500 - $14,000
$8,000 - $12,000
Science is more than just the experiments
Grants
Politics
$5,000 - $20,000 / country

11. & Competitor Analysis {page 22 – 29}
+ Patent Searching
& Competitor Analysis {page 22 – 29}
Patent Literature {page 23}
Why? ‘…more than two-thirds of the patent applications had no companion paper in a scientific journal’ (Mucke 2011)
Easily accessible
Free
Science is more than just the experiments
Grants
Politics
Competitor Analysis
Knowledge is power
Proactive approach
Could provide incite for collaboration?

12. + To Do or Not to Do {page 30}
Search the patent literature
Identify your competitors
Engage a patent attorney who is an expert in the technical field
Do not disclose information relating to your invention before the priority date
Have a clear focus about how your patent application supports a commercial strategy
Science is more than just the experiments
Grants
Politics

13. Thank you
Contact:
Dr Renee White
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