TO PATENT OR NOT TO PATENT...
Our project is focused mainly on modifications of sugar induced promoters from E.coli genome. Discoveries (e. g. the mere discovery of natural substances such as the sequence or partial sequence of a gene) are not patentable. The question is, what is, from the field of biology, patentable? What about modified sequences of genes? Is it possible that introduced modifications makes them patentable? To answer these questions our group decided to take part in a specialist course from patent law. The course was conducted by the PhD Jakub Kępiński who is a doctor of laws, legal counsel and a specialist in civil law and intellectual property law. As a lecturer on Adam Mickiewicz University, owner of legal adviser office and main contactor of NCN grant, he has enormous knowledge and experience in issues connected with patenting procedure.
At the beginning we weren’t aware of, that there are few different possibilities to protect intellectual property. Basically, we can distinguish patents, trademarks, copyright, designs and trade secrets. PhD Kępiński explained us what are the differences between these types and when is worth to use them. Since the main tasks of patent system are encourage technological innovation and promote technology transfer, we have all agreed that patenting meets our needs.
During the course we have collected much useful data which we used as a base for the short summary which is presented below.
Before you read:
• Invention- an invention can be a product, a process or an apparatus. To be patentable, it must be new, industrially applicable and involve an inventive step.
• Biotechnological invention- according to the European Patent Convention (EPC), ‘biotechnological inventions’ are inventions which refer to a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used (Rule 26(2) EPC).
• Biological material- concern to any material containing genetic information and capable of reproducing itself or being reproduced in biological system (Rule 26(3) EPC). This covers living organisms and DNA.
• R&D- Research and Development; refers to the investigative activities a business conducts to improve existing products and procedures or to lead to the development of new products and procedures.
What is patent?
Patent is a method/way for protection technical inventions. It is valid in individual countries, for a specified period of time. Patents confer the right to prevent third parties from exploiting an invention for commercial purposes without authorisation.
Why should I patent my invention?
The wide economic significance of patents derives from the fact that patentees can prevent third parties from commercially exploring their inventions for up to 20 years from the date of filling of the application.
According to the promoting technology transfer we have to take under consideration fact that over 80% of the world’s technical knowledge can now be found in patent documents. This have a huge influence on other people because can inspire further inventions and at the same time prevent duplication of R&D work.
How to get a patent protection?
Unfortunately, patent protection is not automatic. To get it, you have to file an application describing the invention in technical terms and in a form that meets certain requirements. The first step is to file an application with a National Patent Office.
Our group is representing Poland, a country which is called the heart of Europe, for this reason we were interested in European patent, which in opposite to national patent has few extra advantages. First of all, the European Patent Convention makes it possible to obtain patent protection in about 40 European countries on the basis of a single application! What is more, you as an applicant can select the countries in which you want protection. When it comes to a paperwork, the term, scope of protection, binding text and grounds for revocation of European patents are the same for all contacting states to the European Patent Convention. So conveniently, isn’t it?
What can be patented in Europe?
Under the law of European Patent Convention (EPC), patents are only granted for inventions that are new, involve an inventive step and are industrially applicable. An invention meets these requirements if it was not known to the public in any form prior to the date of filing, was not obvious to a skilled person and can be manufactured or used industrially. Below you can find few examples, what can be patented, from the field of biotechnology.
What is patentable:
- Genes and nucleic acid molecules (e.g. disease related genes for diagnosis or antisense, siRNA molecules for therapies)
- Antibodies (e.g. for cancer treatment, pregnancy tests)
- Viruses and virus sequences (e.g. hepatitis C virus and HIV for blood testing and development of vaccines and therapies)
- Micro-organisms (e.g. bacteria for bioremediation, yeast for food production)
- Plants (e.g. herbicide resistant soybean)
- Animals (e.g. disease models for research such as the genetically modified ‘oncomouse’)
What is not patentable?
- Sequences without a known function
- Genetically modified animals that suffer but are not associated with a substantial medical benefits
- Human embryos
- Human germ cells
What does a patent application consist of?
An European patent application consists of (Article78(1) EPC):
- Request for grant
- Description of the invention (Rule 42 EPC)-a disclosure of the invention and what problem it is supposed to solve
- Claims (Rule 43 EPC)- determine the extent of protection conferred by an European patent
- Drawings referred to the description or the claims
- Abstract (Rule 47 EPC)- around 150 words that can be used as a search tool for other patent applications
From application to patent grant
Just to summarise, by introducing sets of modifications into sequences of sugar induced promoters, present in E.coli genome, we obtained promoters that from the economical point of view, can be a very interesting product for biotechnological companies as well as for the ordinary scientists. So it may be worth to patent some of them... We are still thinking about it, but for sure if we decide to do this, now we know how!
3. Materials from Dr Kępiński