Monday, 26 August 2013

10 Pieces of Advice to Patent Applicants From A Biotech Attorney

The advice below is from the perspective of a biotech patent attorney.  It assumes that the Applicant is aware of the essential basics, such as not disclosing the invention or knowing the purpose behind filing the invention.  The advice is meant to provide thought for more subtle aspects that may be applicable in certain cases.

1.       Be careful in pre-judging the patentability of the invention and chances of success.  For complex biotech inventions the contribution made by the invention can sometimes be seen in different ways.  For instance the Examiner might not start from the same document as the Applicant, which could make a crucial difference.  Sometimes contribution is a complex mix of prior art teachings away and towards the invention and the advantages provided, and it may need Attorney input for a proper analysis of this.

2.       Be prepared to see the invention in a layered way.  The dependent claims provide additional narrower definitions of the invention.  Limiting the main claims to a narrower invention could still lead to the patent achieving the commercial objective.

3.       Be prepared to deal with a percentage likelihood of success.  In many cases whether or not a patent will be granted in a given territory and with what claim scope is very difficult to predict.  Patent attorneys will sometimes be brave enough to provide a percentage likelihood of success, which is often much more useful than nothing at all.

4.       At the point of each new filing look ahead to future filings and plan accordingly.  The disclosure in the present filing should not undermine future more important filings.

5.       Don’t expend too much resource on filings which are not important.  Important cases should be given more time and money.

6.       Review the existing cases frequently enough to ensure that they are providing optimal value.  Think about abandoning those that are proving difficult to prosecute, or at least narrowing the claims at an early stage.

7.       Make sure you are aware of all of your inventors’ publications which are often the most relevant prior art.

8.       Bear in mind that applications have value whilst they are pending.  They have deterrent value and can be a source of income.  Do not therefore narrow your claims too soon and do not assume that a fast grant is always the best strategy.

9.       Ensure that your attorney is provided with all possible data to do with the invention.  Experiments that seem routine or trivial might still provide important ‘support’ for the claims or show additional technical effects.  In some territories having as much experimental data as possible is an advantage.

10.   Ensure your scientists know that further developments cannot be publicised before a further patent application is filed.  Even perceived minor developments and ideas need to be reviewed before publication.  Ideally no work should be made public before publication of the application occurs.

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