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Getting Maximum IP From R&D

June 4, 2018

By Noel Courage and Don Bocchinfuso

 

IP protection allows creators to gain the full economic benefit of their innovations. This promotes reinvestment in R&D, leading to further innovation. For many companies, a strong IP portfolio covering key markets is their most valuable asset. This article demonstrates how different forms of IP can be combined to protect life sciences innovations, using the example of a mass spectrometer.

Patents

A patent grants an exclusive right to manufacture, use, or sell an invention. In life sciences, patents may be granted on inventions such as new and inventive drug compounds, genetically modified cells, medical devices, methods of synthesis, hardware, and computer-implemented processes. Our mass spectrometer example shows how a single product may be covered by multiple patents. There may be inventions in reagents, chemical processes, mechanics, processors and software. The entire machine may be patented as a system. A patent may also be granted for an individual component such as a liquid chromatography input. Other patents can cover disposable products, operational processes, assays, and certain processes of analysis. For example, in 2017, Thermo Fisher was granted patents related to a method of operating a mass filter in a mass spectrometry system. In situations where a company decides not to file a patent, keeping an innovation as a trade secret may provide an advantage.

Industrial Designs

Industrial designs provide narrow protection on the look (aesthetic) of objects such as shape and pattern. The sleek design of a mass spectrometer casing may be registered.  For example, Shimadzu Corporation, has registered the specific ornamental design of its mass spectrometer. An industrial design may even cover simple components such as a sample tube rack. The industrial design can be registered in addition to filing for conventional utility patents on function.

Trademark

Trademark protection grants the exclusive right to use a brand. Like most products, mass spectrometers bear the name or logo of their manufacturer. This mark serves as a clear indication of the source of the machine, and is a tool used by companies to build and protect goodwill (ie. distinguish their goods or services). “Orbitrap,” “Thermo Fisher,” and “Sciex” are examples of registered trademarks.

Copyright

Copyright grants the exclusive right to reproduce a protected work. Unlike other forms of IP, copyright need not be registered; it exists automatically as soon as a work is created (registration does provide additional advantages). The mass spectrometer itself is not eligible for copyright protection. However, instruction manuals, software code, product images, and laboratory notes are all protected by copyright and extend IP protection beyond the device itself. Many examples of copyrighted works can be seen on mass spectrometer company websites.

Licensing

IP rights may be economically exploited by way of licensing to others that want permission to use the IP rights. Licences are particularly attractive for companies that do not have the interest or means to profitably exploit an IP right themselves. Patents covering mass spectrometry innovations have been licensed by significant industry players for both device components and assay methods. As an example, in 2017, SISCAPA Assay Technologies Inc. licensed their mass spectrometry assay calibration technology to Waters Corp.

Litigation

IP litigation enforces IP rights against an infringer. In Canada, a patent owner may seek a permanent injunction preventing an infringer from selling infringing products. A court may also award compensatory damages, or an accounting of profits. An example of patent litigation is the U.S. lawsuit in which Waters Corp paid Applera Corp $18M to settle Applera’s allegations that Waters infringed Applera’s mass spectrometry patent.

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Companies should use a wide range of IP tools to protect their innovations, as shown by the mass spectrometer industry. IP supports your own company’s growth and products, but can also be commercially exploited by licensing or enforcement. 

 

This article was first published in © 2018 Biotechnology Focus™.

To read the PDF version, click here.

 

Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.

Author(s):

Noel Courage Noel Courage
B.Sc. (Biochem.), LL.B.
Partner
416.957.1655  email Noel Courage