COLUMBUS, Ohio, Sept. 9, 2002 — Patent early, patent often and, by all means, keep it to yourself if you haven’t done either.
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Making “pronouncements and other excited utterances” before filing a patent is one mistake made by university researchers, according to Dennis Bennett, director of global IP for biotech at Pharmacia Corp.
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“You couldn’t resist showing your colleagues this new gizmo at a conference,” Bennett said Friday, speaking at a bioMEMS and nanotech conference in Columbus, Ohio. “That can destroy your ability to get meaningful patent coverage.”
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The potential peril of loose lips is most pronounced outside the United States, where European and Asian nations have a first-to-file system, meaning those who get to the patent office first win the race, regardless of who initially conceived the idea. The U.S. system rewards the first to invent, but that requires extensive written documentation with key dates of conception.
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The lack of lab notes, Bennett said, can lead to another common blunder: “The courts consider inventors to be liars, so keep a written record. … The No. 1 important thing in patent law is dates.”
Of course, the process is time-consuming — and hardly cheap for a university or a small startup. Filing fees with the U.S. Patent and Trademark Office range from a few hundred dollars to more than $1,000, and legal counsel can add several thousand dollars more. On top of that, there are fees when the patent is issued and maintenance fees throughout the patent’s 20-year life.
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Still, that’s small change compared to the hundreds of thousands or millions of dollars that could be sunk into settling or fighting an infringement suit.
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Bennett, along with Stephen Lee, a professor and associate director of Ohio State University’s Biomedical Engineering Center, launched BioMEMS and Biomedical Nanotech World 2002. The patenting workshop on Friday kicked off the third annual, three-day conference designed for researchers, educators and investors in the emerging fields.
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“Patent early and often so you can build a fence or thicket around your core technology,” said Lee, a former colleague of Bennett’s at Pharmacia who now teaches biomedical and chemical engineering as well as cellular and molecular biology at Ohio State.
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They described a patent as being like a deed to a piece of property — the holder has legal rights of ownership and exclusive rights to capitalize on the invention. But there are no rights to enforce anything until the patent has been issued.
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Lee said early patents in pioneering fields like nanotech can have broader claims and the standards are less strict because the first innovations are the “tollgate technologies” — those pivotal to practice in the area. But that doesn’t mean they automatically will be approved by U.S. and European patent offices, or withstand legal challenge by a competitor.
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Shaun Lonergan is senior vice president of business development at Wisconsin-based NimbleGen Systems Inc., which protects its patents in part by developing microarrays in Iceland, where there are no conflicting claims to its work.
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It’s not that the company fears that its core technology — from Franco Cerrina’s lab at University of Wisconsin — belongs to anyone else. But Lonergan said the broad nature of patents in this emerging technology coupled with a litigious society require a defensive approach.
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“As long as there’s money to be made, there are usually enough patents overlapping each other,” he said. “It’s the world in which we live.”
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Mauro Ferrari, an Ohio State professor and administrator, as well as a co-founder and scientific adviser to Columbus-based iMEDD Inc., served as chairman of the conference. He said organizers decided to kick off the event with a pep talk on patents because it’s the way research is heading — or should be.
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“I patent everything — or at least as much as I can,” said Ferrari, whose many jobs include serving as the university’s associate vice president for health sciences, technology and commercialization. “It’s necessary to find ways to get patent protection. Otherwise the tremendous wealth of IP is lost, and lost forever.”
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“To me, it’s our ethical responsibility as researchers to move these ideas into the marketplace. … As much as I enjoy academic life, I look at myself as having that responsibility.”