IP : Patent as source of information

Transcription

1 IP : Patent as source of information PATENT SEARCH - Tech Transfer course August 2017

2 Patent search session Introduction: Why- Where- How- What? Hands-on: Topic 1- Red biotech example Short Break Interactive part Hands-on: Topic 2- NewCo patent and prior art search Summary and questions

3 Tips and tricks Why? Where? How? What?

4 Why? Patents as source of information Up-to-date: Up to 80% of current technical knowledge can only be found in patents; A lot of information is never published in scientific literature Reliable data: Exigency of sufficient disclosure: clear for a skilled artisan to repeat the invention, especially rich source of sequences

5 Solutions to technical problems An estimate of 85% of all patents are no longer in force: Inventions freely available Avoid duplication of R&D efforts and spending About 30 % of expenditure lost in Europe by duplication of research Gather business intelligence See also: Research? Think Patents: Why researchers should care about patents?

6 Where? Patents are globally accessible although only nationally valid Free databases from patent offices Espacenet and European patent register (EPO), USPTO, WIPO, Japanese patent office. Reliable, but not always search friendly Limited search engines compared with commercial databases

7 Free databases from other Google patent search, Patent Lens. May give additional information (e.g. available for license) Not sure how complete and reliable the data are

8 Espacenet (EPO) EP, PCT, US, Japanese and several other national applications and/or patents User friendly search menu Key word searching on title and abstract Limited wild cards and truncation (only right hand) Full text and scanned documents available Useful links to juridical status and register Indication of patent family (but not all family members are listed in the results list)

9 European patent register More detailed information on European patent applications Legal status Full text of the application All correspondence including examination reports and claim amendments

10 US Patent and Trademark Office Only US patents and applications Search engine more powerful than in Espacenet, but less user friendly Full text available Key word searching on title, abstract, description and claims (full text searching) possible

11 World IP organization (WIPO) Search engine similar to (but different from) USPTO Alternative drop down search menu similar to Espacenet Full text searching possible (title, abstract, description, claims) Take care: not all applications are in English!

12 Alternative free services Limited added value; but allows for sequence searches:

13 WWW In some cases, a global web search can be useful: A lot of patent related information can be found on the internet Especially useful to link a brand name to a company Can be useful to trace back inventors

14 Professional databases (by providers) Derwent Innovation, Cortellis (compounds), Sci Finder (Structures, CAS), STN, Questel

15 Professional databases (by providers) More than only patent information (but also literature databases and economical data) Powerful search engines (far better than in the free sources) but sometimes using specific search language (keywords!) Beside boolean operators and truncations, also proximity searches possible Only safe way to find patented sequence (not all are in public databases) Expensive!!!

16 How? Bibliographic data Title Abstract Publication number Application number Priority number Priority date Assignee Inventors Classification code

17 Basic search strategy not essentially different from searching scientific data bases: Keywords and authors (=inventors) Due to patent peculiarities, alternative search strategies are possible (such as assignee, priority date, classification code ) Patent classification code can be powerful tool

18 Keyword search Most simple way of searching Definition of good keywords is essential: avoid commonly used words (e.g. cell) or words with double meaning (e.g. plant) Vary keywords, list them, write out abbreviations Search in title, abstract, description, claims Full text search gives often too much background, abstract search is more relevant

19 Keyword search Boolean operators (and, or, not) are useful if available Alternative gene / protein names can be searched e.g. using WikiGenes ( Gene Cards (human database- Pharmacology ligands/targets (

20 Inventor search Search for first and last author of publication (essential contribution) if you want to assess if data is patented Related patents/research? Assignee/Applicant Difficult: company commercializing the invention may be different from patent holder Company may have different divisions with different names Even more complicated: frequent fusions and takeovers in Biotech Advantageous to assess Business intelligence on certain topic

21 Classification code In principle, powerful search tool: every class of inventions (products, methods) has own number Similar, but different systems: International Patent Classification (IPC), developed by WIPO Cooperative Patent Classification (CPC) (former ECLA ) developed by EPO and USPTO CPC system more elaborated than IPC US has own classification system (USPC) Take care: not all documents have CPC or IPC classification code

22 Classification code Classification may help in combination with ambiguous keywords Very useful in settled technologies, but incomplete for rapidly evolving technology like Biotech; classification is not always consequent yet

23 Classification code Example in CPC Chemistry, metallurgy:c Biochemistry, Beer, Spirits, Wine, Vinegar, Microbiology, Enzymology, Mutation or genetic engineering: C12 Micro-organisms or enzymes, compositions thereof: C12N Mutation or genetic engineering; DNA or RNA concerning genetic engineering: C12N15 Example in ECLA Meaning of code as well as code belonging to keyword can be searched Main problem is scattering: e.g. antibody is distributed in 10 classes ECLA code:

24 What? Patent status /publication e.g. A application B grant International: PCT/GB02/02806 WO A1 European: EP EP A1 EP B1 USA: US 11/409,718 US A1 US 6,174,724 B1 Japan: JP JP A JP (B2)

25 What? Numbering European patents Application, published 18 months after filing with the EPO or 18 months after priority date: A1 document: published with European search report A2 document: published without European search report (search report not available at the publication date) A3 document: Separate publication of the European search report A4 document: Supplementary search report Granted patent: B1 document: description (granted patent) B2 document: New description (amended description) B3 document: description (after limitation procedure)

26 Questions?

27 Hands-on Topic 1- Guided search example Short Break Topic 2- Pitch project- Patent search (own search)

28 Invention: Anti-RSV single domain antibody Background: Respiratory Syncytical Virus (RSV) is an important cause of lower respiratory tract infection in infants and young children and causes annual epidemics during the winter months. RSV-neutralizing antibodies target either the RSV attachment glycoprotein (G) or the fusion glycoprotein (F). The F protein exists in 2 conformations, the prefusion form (before virus-cell interaction) and the postfusion form (after merging of virus and cell membranes).

29 Data on 18 th June 2015: A Nanobody TM that binds to the prefusion form of RSV F protein with an affinity of < 18 pm in vitro neutralizes RSV serotype A (IC50 of 21 pm) and RSV serotype B (IC50 of 15 pm) Evaluation of patentability / prior art search: Is the (potential) invention patentable?

30 Keywords:

31 Google (scholar): Google patents: USPTO: FPO: Pubmed:

32 What is novel: Are there binding agents disclosed in the prior art that bind to the RSV F protein?

33 Do those binding agents neutralize RSV serotype A and B? In vitro potency/ic50?

34 Are there any (other) differences between the disclosed binding agents and the single domain antibody of our invention?

35 Is the amino acid sequence of the single domain antibody novel? Sequence search: SEQ ID: 131 aa QVQLQESGGGLVQPGGSLRLSCAASGFTLDYYYIGWFRQAPGKEREAV SCISGSSGSTYYPDSVKGRFTISRDNAKNTVYLQMNSLKPEDTAVYYCA TIRSSSWGGCVHYGMDYWGKGTQVTVSSHHHHHH

36 Taking the prior art into consideration, what is the invention?

37 Original claim 1: (priority application) A single domain antibody, characterized in that said single domain antibody binds specifically to the prefusion form of the fusion (F) protein of respiratory syncytial virus (RSV). Documents of the European search report (some examples): D1: WO 2011/ (Ablynx) D2: WO 2010/ (Ablynx) D3: Schepens et al., J Infect Dis, 2011, 204: D4: Hultberg et al., PloS ONE, 2011, 6:17665 D5: Gilman-MS et al., PloS Pathog, 2015, 11: D6: WO 2009/ (ID Biomedical Corp Quebec, GSK) D1-D4 disclose a Nanobody binding to the RSV fusion protein (pre- and postfusion forms). D5 or D6 is considered as closest prior art by the Office. They disclose RSV A and B prefusion protein F specific antibodies.

38 Patent application

39 Original claim 1: A single domain antibody, characterized in that said single domain antibody binds specifically to the prefusion form of the fusion (F) protein of respiratory syncytial virus (RSV). Filed claim 1: (PCT) An immunoglobulin single variable domain (ISVD) that binds specifically to the prefusion form of the fusion (F) protein of respiratory syncytial virus (RSV), characterized in that said ISVD shows in monovalent format a similar neutralization activity of RSV serotypes A and B.

40 Legal status WO A1 (Saelens et al.) What is the current legal status of this application? (e.g. international, national, granted, validated), on which websites could you find this? What is the expiry date supposing that a granted patent is obtained for this application?

41 Status of pending applications: You probably found the following patent document of Ablynx: WO (or EP ). Check the current status of the European application on the European Patent Register: How broad is the protection of the pending European application? Do we have FTO with our invention as compared to Ablynx EP ?

42 What is the current status of the application in EP? Latest events?

43

44 Guiding slides for search on Pitch topic

45 Evaluation patentability/ prior art search of your own invention 1. What is the invention? (i.e. which technical solution is provided for which technical problem?) 2. Is the invention patentable? 1. In other words, check what is already established in the prior art. 2. Are there patents that disclose or claim your invention? Are these relevant for evaluation? 3. Is the invention novel, inventive and applicable? 3. What could be a product claim, a method claim and a use claim for your invention?

46 1. What is the invention? Problem? Solution? What makes your invention better or different from existing inventions/competitors/?

47 2. Patentability in view of prior art Identify keywords and then search: Non-patent literature Patent literature Are there documents that disclose or even claim your invention? Could you identify novelty/inventive step destroying documents? Which sites/databases do you use?

48 Is your invention patentable based on the data and the prior art? In other words, is it novel, inventive and applicable?

49 3. Suggestion for a product claim, a method claim and a use claim. Product: Method: Use:

50 4. Business case IP strategy: Based on invention for a 1 st patent: Type of follow-up inventions/patents? How can your business fore see an IP portfolio? What are the possible improvements? Broadening features?.