March 2005, Issue 4

OTL&IC Presents Seminars on Dealing with Intellectual Property

The Office for Technology Licensing & Industry Collaboration recently sponsored seminars on intellectual property for the Tufts research community. Talks were given on the Grafton campus on November 2, 2004, the Medford/Somerville campus on December 1, and the Boston campus on December 14.

The Grafton seminar, “Protecting and Commercializing Intellectual Property,” was presented by Ingrid Beattie, a patent attorney from Mintz, Levin, Cohn, Ferris, Glovsky, and Popeo.

The Medford/Somerville campus seminar speakers were Anne Collins and Sandra Brockman-Lee of Hamilton, Brook, Smith and Reynolds, who presented "Patenting Early-Stage Discoveries," and Gregory Altman of the Department of Biomedical Engineering, who presented "Starting a Company Based on Tufts Research." Greg Altman is president, founder, and CEO of Tissue Regeneration, Inc., a Tufts start-up.

The Boston speakers were Steven Gold, an entrepreneur, who presented "Commercializing Early-Stage Discoveries," and Kathleen Williams, a partner at Palmer and Dodge, who presented an "Intellectual Property Primer."

The presentations were followed by a question and answer session, and staff from the OTL&IC were present to speak with attendees after each seminar. Highlights of the Grafton seminar are presented below. The Medford/Somerville and Boston presentations will be discussed in future articles.

At the Grafton seminar, Ingrid Beattie stressed the importance of communication among the investigator, the OTL&IC, and the patent attorney. The more all three parties understand about the discovery and its possible commercial applications, the better they can work together to develop and prosecute a successful patent application.

Investigators can foster discovery of patentable inventions by creating a laboratory environment that encourages all research personnel to

  • be aware of what is patentable (see below) and be on the lookout for possibly patentable discoveries;
  • document their research meticulously, including all brainstorming sessions and laboratory meetings, to prove the earliest conception of an invention;
  • keep track of and make contact with possible industry partners, who often attend research symposia; and
  • be aware of the effect on the patentability of an invention of any form of public disclosure about a discovery (see below).

To be patentable, a discovery must be

  • new, meaning never before known, used, or described by others;
  • non-obvious, meaning it’s not the next logical step;
  • useful, so a gene sequence, without knowledge of its function, would probably not be considered useful; and
  • enabled, meaning able to be made.

Examples of possibly patentable discoveries include novel assays, antibodies, enzymes, single nucliotide polymorphisms with known functions, and compositions of matter.

The proper timing of any public disclosure is essential to a successful patent application. Please keep in mind that patents are granted on a country-by-country basis. Although the United States gives patent seekers a one-year window after public disclosure within which to file a patent application, other countries do not give a grace period and will deny a patent for any discovery that has already been disclosed publicly. For this reason the OTL&IC recommends that investigators contact the office prior to any public disclosure to forestall potential loss of worldwide patent rights.

Public disclosures include

  • publication in a scientific journal (the journal mailing date or the internet posting date),
  • verbal public communication at a scientific meeting,
  • a poster presentation,
  • funded US grant proposals,
  • graduate student theses,
  • some clinical trials, and
  • the patent application itself, which is published 18 months after the first filing date and is considered a public disclosure for any subsequent patent applications.

For more information on the OTL&IC, go to http://techtransfer.tufts.edu/.

 

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