Bridging the Gap Workshop A Guide to your IP Handbooks Dr Renee White Peter Doherty Fellow Trainee Patent Attorney May 2016 © watermark

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+ Lessons Learned from the ‘Other Side’ To change go to <View> <Header and Footer> Edit first line from <Footer> second from <Date and time> + Lessons Learned from the ‘Other Side’

+ 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

+ 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

+ 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?

+ 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

+ 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

& 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?

+ 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

Thank you Contact: Dr Renee White 9819 1664 r.white@watermark.com.au www.watermark.com.au © watermark