Patents and the patenting process

What is patenting and why is it important?

What are patents?

Patents protect an invention from being commercialised by others without the owner’s consent. A patent does not give a right for use, but rather prevents others from having the right to use your invention (without your permission).

The responsibility for enforcing the right of this protection, lies with the owners of the patent. Patents can still be infringed, if the owner does not take action.

What is the benefit of a patent?

Before an invention is ready for the market or the clinic, large investments are often required. In the case of drug development, the cost of clinical trials alone can exceed €1,5 B. Companies in the business of drug development will only invest such amounts if they know the drug will be protected by a patent, that they have access to.

This will allow the company to recoup the investment, once the drug makes it to the market. In other innovative industries this is not any different. Often high investments will need to be recouped in a relatively short period. For a company to consider investing in a collaboration, a patent or the ability to patent on the invention is therefore often a requirement.

How do I know if my discovery is patentable?

Patentable subject matter includes: Processes, machines, compositions of matter such as chemical compounds, proteins and the like, devices, methods and some computer programs.

Not-patentable are: Theories, ideas, laws of nature, natural processes, scientific principles or results.

If you are not sure whether your discovery is patentable, we still encourage you to contact the Business Development team to discuss your invention. Even if your invention is not patentable there can be other routes to create impact with it.

How does the patenting process work?

Patent applications often start with a priority application, which determines the date of the invention. After this first filling, the inventor can publish his results without it counting as ‘prior-art’ for the filing, as long as not more is disclosed than the priority application (be careful with forward looking statements). Prior-art, or any information on the invention in the public domain before the application, can destroy the novelty required for obtaining a patent.

Since the language used in patent applications is highly specialised, Luris works closely with external patent attorneys to draft the application.

The application will be reviewed by a patent examiner for being novel (it is not yet disclosed), non-obvious (it is an invention), and is susceptible to industrial application (it is reproducible).

After filing the first application, the inventor has twelve months to gather additional results in support of the invention. The inventors, together with Luris, will often contact companies at this stage to gauge their interest. If there is sufficient ground to continue with the application after 12 months, Luris – together with the inventors – can decide to file an international PCT application. The PCT process takes 18 months, during which the patent examiner will create a search rapport and the invention is published.

After the PCT phase, the owners of the patent need to decide in which countries to issue the patent. This is called the national phase. Each country has different patent laws and therefore needs separate prosecution and translation into the local language. For each geographic area, an examiner will either accept or reject the application. The letter sent by the examiner is called an Office Action.

If the application is rejected, the patent attorney will together with the inventors write a response. The inventors may narrow down the claims and/or point out why the examiner’s position is incorrect. This process is known as prosecution.

The examiner can resolve the application by issuing a final rejection, or a notice that the application is allowable, in which case the examiner agrees to issue the patent.

National protection is expensive (sometimes in the hundreds of thousands), depending on which and how many countries you target. Costs at this stage are often borne by the commercial partner and the decision of which countries to target is a commercial one, so it is crucial to have a partner within 30 months of first filing. Luris advises you throughout the patent application process and will, together with the patent attorney and your input, take the formal decisions during the patenting process. Filling a patent application will require a significant time contribution from the inventors, in terms of providing the contents for writing the application, and in some cases gathering additional data.