Recherche und Beratung

Transcription

1 1. Basic aspects of the patent 2. Biotechnology - Protection of Plant Inventions 3. Patent Searching in Espacenet 4. Advanced Patent Searching 5. Biosequences in Patents 1

2 1. Basic aspects of the patent Patent, Utility model, Design patent Patent Prosecution 2

3 Patent Utility model Design patent A patent is a set of exclusive rights granted by a sovereign state to an inventor or their assignee, in exchange for the public disclosure of the invention. An invention is a solution to a specific technological problem, and may be a product or a process. Patents are a form of intellectual property. A patent is granted for a limited period of time; the duration of a patent is mostly 20 years starting from the priority date. 3

4 Structure of a Patent ABSTRACT: Summary of the invention DESCRIPTION: Backbone of the application Disclosure of the invention must be clear and complete for it to be carried out by a person skilled in the art. CLAIMS: include all essential features of the inventions; Independent and dependant claims EMBODIMENTS: are particular implementations or methods of carrying out the invention, or the prior art DRAWINGS: illustrating the invention, but not essential 4

5 Structure of a Patent 5

6 Patent Prosecution Filing of a patent Search Report Examination Grant Renewal Opposition 6

7 PCT procedure Source: WIPO ISR: International Search Report IPRP: IPRP stands for International Preliminary Report on Patentability 7

8 Utility model Patent Utility model Design patent In some countries, inventions may also be protected by utility models. Petty patents" or "utility innovations" The conditions are usually less stringent (since no inventive step or only a less significant inventive step is required). the duration of a utility model is maximally 10 years. The procedure for registration is faster and acquisition and maintenance fees are generally lower than those applicable to patents. Applications are usually to be filed with the national IP Office. 8

9 German Utility model 9

10 Patent Utility model Design patent The design patent is a form of intellectual property that extends industrial design rights over the visual design of objects that is not purely utilitarian. the duration of a design patent is maximally 25 years. 10

11 Patent Utility model Design patent 11

12 2. Biotechnology - Protection of Plant Inventions 12

13 Development in Patenting Plant Inventions in Europe The European Patent Convention (EPC) (1973, revised 2000) provides the legal framework for the granding of European patents via a centralised procedure; etablishes the European Patent organisation (EPO); 38 EPO contracting states Directive 98/44/EC of the European Parliament and the Council of the EU of 6 July 1998 on the legal protection of biotechnological inventions implemented into the EPC in 1999 Directive shall be used as supplementary means of interpretation National law to implement EPC and Directive 13

14 Biotech patent applications at the EPO Biotechnology is one of the ten most actice fields Strict quality standards average grant rate for all technical fields is 43% only about 28% of biotech applications lead to a patent 1.5 million patents granted by the EPO since % of these concern biotech-related inventions 14

15 Biotech patent applications at the EPO Patent Research in Biotechnology Dr. Siobhán Yeats, EPO, Brussels

16 What are the granted plant patents related to? Data from Feb 2011 Dr. Siobhán Yeats, EPO, Brussels

17 Plant patent applications at the EPO Patent Research in Biotechnology Dr. Siobhán Yeats, EPO, Brussels

18 Patents on Plants Christoph Then & Ruth Tippe, EPO Report

19 Patents on Plants no GE Patent Research in Biotechnology Christoph Then & Ruth Tippe, EPO Report

20 Where do patents to plant related inventions come from? Data from Sept 2011 Dr. Siobhán Yeats, EPO, Brussels

21 And within Europe? Data from Sept 2011 Dr. Siobhán Yeats, EPO, Brussels

22 Development of Plant Biotechnology Pre-1950: conventional plant breeding to make new varieties 1980: start of genetic engineering of plants: insertion of nonplant genes into plant genomes Monsanto: glyphosate (RoundupReady) - resistant plants Ciba-Geigy: BT (Bacillus toxin) -containing corn Early patents all for transgenic plants From 2000: rapid development of gene technology: possible to work on plant genomes to improve classical plant breeding marker-assisted breeding characterisation of native plant traits (natural genes encoding resistance to herbicides, pests, drought) 22

23 Types of Plant inventions Better processing herbicide resistance pest resistance (viruses, nematodes) Improved plants functional food (broccoli, sunflower, "golden rice") drought resistance high yield New ornamental plants flowers with novel colours dwarf plants Plants as a biofactory (vaccines, antibodies) Methods for making new plants expression systems transformation 23

24 Patentable are (EU Directive, EPC) Biological material (e.g. a (plant) gene sequence) which is isolated from its natural environment or technically produced, even if it previously occurred in nature, is patentable. Plant varieties and essentially biological processes for the production of plants are not patentable. technical processes, e.g. irradiation of seeds, are patentable Plants are patentable when the technical feasibility of the invention is not confined to a particular plant variety (EU Directive, EPC). Microbiological processes and their products are patentable. 24

25 Plant variety protection Plant varieties to be protected under UPOV Variety defined by whole genome or gene complex (DUS criteria) Definition of plant variety (Rule 26(4) EPC =UPOV Convention)-DUS Any plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a plant variety right are fully met, can be: (a) defined by the expression of the characteristics that results from a given genotype or combination of genotypes (distinct), (b) distinguished from any other plant grouping by the expression of at least one of the said characteristics (uniform), and (c) considered as a unit with regard to its suitability for being propagated unchanged (stable). 25

26 Tomato varieties: distinct, uniform, stable Dr. Siobhán Yeats, EPO, Brussels

27 Plants versus Varieties Dr. Siobhán Yeats, EPO, Brussels

28 What is an essentially biological process for producing plants? In 1973, only traditional plant breeding processes possible crossing and selection no controlled genetic engineering Modern gene technology made generic plant inventions possible and revolutionised breeding mapping of plant genes and native traits by markers moving genes between plants in a controlled way Where is the line to be drawn between patentable and non-patentable processes? is marker-assisted breeding patentable? is a breeding process patentable if it includes further steps as well as crossing and selection? 28

29 Essentially biological processes? EP (G 2/07, broccoli): Method for production of Brassica oleracea, comprising steps of crossing and selection, wherein molecular markers are used to identify desired hybrids EP (G 1/08, wrinkled tomato): Method for breeding tomato plants that produce tomatoes with reduced fruit water content, comprising crossing and selection steps, followed by allowing fruit to remain on the vine until it is partially dried, and screening the fruit for reduced water content. 29

30 Broccoli/tomato rulings on breeding methods for plants (G 2/07, G 1/08) Classical methods for producing new plants by sexual crossing of whole genomes and subsequent selection of desired plants are not patentable even if there is an additional technical step before or after the breeding steps marker-assisted breeding not patentable Transfer of a gene (or group of genes) encoding a single trait into a plant by genetic engineering is patentable 30

31 Conclusions Plant varieties are not patentable they can be protected under the UPOV Treaty Plants are patentable whether or not they are genetically modified Plants produced by classical breeding are patentable provided they are not a plant variety Breeding methods for producing plants based on the sexual crossing of whole genomes and subsequent selection are not patentable 31

32 3. Patent Searching in Espacenet 32

33 Search by keywords 33

34 34

35 Search by truncated keywords 35

36 36

37 Search by keywords and applicant 37

38 38

39 Search by Patent Classification Search by classification 39

40 A: Section A01: Class A01H: Subclass A01H1/00 Main group A01H1/02 Subgroup 40

41 Search by classification and applicant 41

42 42

43 Search by further classifications 1 43

44 Search by further classifications 2 44

45 Legal status of EP Patents 45

46 46

47 Legal status information in the European Patent register Legal status for the european patent document Information about the national patent is available by the national patent offices 47

48 Legal status of the national Patent 48

49 Patent Monitoring: Legal status 49

50 50

51 Conclusions Searching for Patents by keywords, classification, applicants etc. is basically possible in Espacenet Informations about the legal status are available in Espacenet Further commercially databases are needed for detailled intensive patent searches and patent monitoring. 51

52 4. Advanced Patent Searching Search strategies in the commercial database PATBASE (developed by RWS and Minesoft Ltd.) Patent monitoring 52

53 Search in Patbase by keywords Ft= full text Tac= title, abstract, claim cl=claim 53

54 Combination of search steps (example 1) 54

55 Result View (example 1) 55

56 Combination of search steps (example 2) 56

57 Result View (example 2) 57

58 Fulltext View 58

59 Combined search with classes and keywords Class Overview 59

60 Combined search with classes and keywords 60

61 Search by applicant 61

62 Search by applicant Class overview 62

63 Conclusions PATBASE: Patents can be searched in a more intensive manner; e.g. Search by keywords can be performed in the different sections of a patent (Title, Abstract, claims, description). Search criteria and search steps can be combined, e.g. already reviewed documents can be excluded from the further search results. Search results can be analysed and saved for further search. Recommendation: Patents should be searched in the most intensive manner 63

64 Search concepts WHAT? The object to be searched for? Study the invention Technical features Effect of the invention WHERE? Which patent classes? Which keywords? Search Reports? Search by bibliographic data: Inventors, Applicants, Citations HOW? Definition of the search strategy Selection of the database Evaluation of the results If necessary, modification of the search query 64

65 Search concepts: Breeding tomatoes? Breeding tomatoes can be described e.g. by the phrase: METHODS FOR INCORPORATING MULTIPLE GENES IN A CROP PLANT.. Keywords: Block 1: breed? grow? rear? Block 2: tomato? Solanum lycopersicum? Solanaceae? Synonym Block 1 and Synonym Block 2 Broader search: Block 1: hybrid? transgenic? transgen? Block 2: tomato? Solanum lycopersicum? Solanaceae? Synonym Block 1 and Synonym Block 2 65

66 Classes and keywords: Block 1: A01H Block 2: tomato? Solanum lycopersicum? Solanaceae? Synonym Block 1 and Synonym Block 2 Applicant and keywords: Block 1: Monsanto, Syngenta Solanaceae? Block 2: tomato? Solanum lycopersicum? Synonym Block 1 and Synonym Block 2 66

67 Reasoning for Patent Monitoring Minimizing the risk of patent infringement Avoiding duplicate developments Stay informed about the development in the technical field of interest Identify of new trends, identify unprotected technical areas Develope and extend your protective rights portfolio Patent = right of prohibition + source of information + financial asset 67

68 Workflow and role distribution for Effective Patent Monitoring Patent search Selection Distribution Evaluation Information Action Information Professional X Patent attorney Developer Lawyer X X X X X X X X X X 68

69 Patent Monitoring in the technical field of interest Via keywords Classification Applicant e.g companies Patent monitoring over time is possible in commercial databases e.g. Patbase, not supported in Espacenet. 69

70 Patent monitoring over time 70

71 5. Biosequences in Patents 71

72 Transfer of a gene encoding a single trait into a plant by genetic engineering is patentable 72

73 5 DNA and RNAs (Nucleic acids) and Proteins TCA GAG GTG AAA TGC TAT DNA 3 3 AGT CTC CAC TTT ACG ATA 5 5 Transcription UCA GAG GUG AAA UGC UAU RNA 3 Translation Protein N Ser S Glu E Val V Lys K Cys C Tyr Y C 73

74 Sequences in Patents. 74

75 Sequences in Patents. 75

76 Databases for Searching Biosequences Public and commercial database Public databases - Primary web resources: 1. National Center for Biotechnology Information (NCBI) of the U.S. Nationa Library of Medicine 2. European Bioinformatics Institute (EBI) 3. DNA DataBank of Japan (DDBJ) Commercial databases: STN databases: Registry, DGENE, USGENE, PCTGENE (STN is an online database, operated by CAS and FIZ Karlsruhe) 76

77 Sequence Search in NCBI 77

78 78

79 BLAST: Basic Local Aligment Search Tool 79

80 BLAST in nucleotide databases 80

81 Search Results of BLAST 81

82 Search Results of BLAST Evaluation of Results 82

83 Details of the aligments 83

84 BLAST limited to Patent sequences 84

85 Details of the aligments Evaluation of Results: Are the searched sequences protected in patent documents? 85

86 86

87 Conclusions Determination of the search sequence.. Searching for Nucleic acid sequences? Protein sequences? Parameters: Which organisms? Choosing Database for aligments. e.g BLAST in NCBI Parameters: Selection of Similarity? Run Blast Evaluation of aligment results, evaluation of the similarity In Patent documents: Determination of the searched sequences. Are the searches sequences protected? 87