Biotech? Team, a Risk-Diversified Approach and the Ownership of Innovative IP-Protected Technology Or Processes

IP CAREER AS A BIOTECHNOLOGY PROFESSIONAL IP CAREER AS A BIOTECHNOLOGY PROFESSIONAL WHAT IS INTELLECTUAL PROPERTY RIGHT?

Intellectual property is the product of the human intellect including creativity concepts, inventions, industrial models, trademarks, songs, literature, symbols, names, brands, etc. Intellectual Property Rights do not differ from other property rights. They allow their owner to completely benefit from his/her product which was initially an idea that developed and crystallized. They also entitle him/her to prevent others from using, dealing or tampering with his/her product without prior permission from him/her. He/ she can in fact legally sue them and force them to stop and compensate for any damages.

IPR is not a new concept. Protection of IPR allows the innovator, brand owner, patent holder and copyright holder to benefit from his/her work, labor and investment, which does not mean monopoly of the intellect. Such rights are set out in the International Declaration of Human Rights, which provides for the right to benefit from the protection of the moral and physical interests resulting from the right holder’s work; literal or artistic product.

CASE STUDIES:

1. Patents at the Core: the Biotech Business

After information technology, biotechnology is increasingly recognized as the next wave in the knowledge-based economy.

3 www.iipta.com . A recent estimate of the European Commission The strong growth of the biotechnology industry suggests that by the end of the decade the global in recent years has been mirrored by a higher biotechnology market could amount to over 2,000 than average growth rate for patent applications billion Euro. Despite the capital intensity of the and patent grants that relate to biotechnology industry, the growth rate of the biotechnology inventions. According to the OECD, the number industry during the 1990s, and to a lesser extent, the of patents granted in biotechnology rose 15% a beginning of the 21st century has been impressive. year at the United States Patent and Trademark Biotechnology has been at the core of a number Office (USPTO) from 1990 to 2000, and 10.5% at of important developments in the pharmaceutical, the European Patent Office (EPO), against a 5% agrochemical, energy and environmental sectors. a year overall increase in patents.4 The growth in In particular, progress in the field of molecular the number of patents in the field of biotechnology biology, biotechnology and molecular medicine has is largely due to the importance that life sciences highlighted the potential of biotechnology for the and biotechnology companies attach to intellectual pharmaceutical industry. property, particularly patents.

This article will look at some of the reasons why Why are patents so important for companies in these patents are so crucial for biotechnology companies sectors? It is difficult to understand this without in the pharmaceutical sector. By looking at the taking a look at how the industry operates. In the biotechnology business model, the article will seek first place, biotechnology is probably one of the to identify some of the reasons why this sector most research-intensive industries. Compared with relies so heavily on patents and the role intellectual other major industries that also rely on research property rights, and patents in particular, play in and development (R&D), such as the chemical investment decisions in this sector. industry, for which the ratio of R&D expenditure to total revenues is approximately 5%, or the pharmaceutical industry, for which the equivalent PATENTING IN THE figure is generally no more than 13%, biotechnology BIOTECHNOLOGY companies generally invest a significantly higher proportion of their revenues in R&D (often between SECTOR 40% and 50%). As in any research-based industry, the protection of research results becomes a major issue. “Protection of intellectual property is at the core of the business for biotechnology firms.”

www.iipta.com 4 “In no other fields is the relationship between patent These issues need to be borne in mind by protection and the incentives to innovate so strong.” biotech companies not only while drafting patent applications but also while devising their R&D One of the key issues for any biotech firm that is strategy, particularly if patents over the R&D results seeking to patent its inventions is what type of will be crucial for the company’s profitability. biotechnology inventions can be patented. The answer to this question is extremely complex as For companies in the biotech sector it is also well as specific to each jurisdiction. As is the case important to understand that there are strong with any new technological field, biotechnology differences amongst countries concerning what has brought new challenges for the patent system. is considered an invention and what type of In many countries (or regions), recent guidelines, inventions are considered patentable subject matter. directives or legislation have sought to clarify what In the United States of America, in the context of can or cannot be patented in the life sciences. the landmark case Diamond v. Chakrabarty, the Supreme Court ruled that patentable subject matter As in any other field, inventions in the field of included “anything under the sun made by man.” biotechnology need to fulfill the three basic In many other countries, certain inventions are requirements of patentability of novelty, inventive expressly excluded as unpatentable subject matter, step or non-obviousness, and industrial application such as, for example, therapeutic or diagnostic or utility. The question has been how to interpret methods or processes for cloning human beings. It these requirements in the field of biotechnology. is important to consult the applicable law as well Is it sufficient to isolate or purify biological as any jurisprudence on the subject matter that may material from an organism to satisfy the inventive facilitate the interpretation of such exclusions or step requirement? Different countries have taken exceptions. different approaches. Similar debates have arisen with the other requirements. For example, in view As for the sufficiency of disclosure requirement, of the number of patent applications claiming which is present in most national patent laws, partial DNA sequences or protein sequences with patents that relate to micro-organisms may require unclear utility or industrial application, some the deposit of the micro-organism at a recognized patent offices have stressed the importance that depositary institution. Further details on this patent applications should clearly state a “specific, may be obtained from the national patent office. credible, and substantial utility” for the invention. In addition, the debate on what can be patented in the field of biotechnology has also focused on Concerning what is actually patented by biotech ensuring that claims in patent applications are not companies, a recent OECD report identified at least broader than is justified by the invention disclosed three common categories of patents in the specific in the patent so that no patent owner is accorded field of genetic inventions, namely, (1) DNA coding undue exclusivity. for industrially useful expression products (2) Genes as diagnostic tools, and (3) Genes which control biological pathways.

5 www.iipta.com “Anyone, I would imagine, who has tried to create a biotech company knows just how important patents are. You learn this when you’re studying, and again at your first job, and if you haven’t done so before, you realize it the first time you meet potential investors.”

While applying and obtaining Biotechnology companies those companies are now facing patent protection is a key element are very capital-intensive and the need to renew their financing of the strategy of any biotech investments have a long payback in a very difficult financial market. company (or research institution period. This has often proven The European Commission’s seeking to transfer biotechnology a problem for the development advisory Biotechnology and inventions to the private sector of the biotechnology sector in Finance Forum estimated a for commercialization), getting many countries. For example, potential funding gap of up to $1 the patent is only half the a recent report of the European billion during 2003. job. Possibly an even greater Commission has shown that challenge is how to turn the while Europe has been very patented invention into a successful in creating new profitable asset. biotechnology companies,

www.iipta.com 6 According to its managing director, the key issues .2. What Myriad means for that are important for investing in a biotech start-up are the presence of a strong and capable managing biotech? team, a risk-diversified approach and the ownership of innovative IP-protected technology or processes. Who owns your genes? Do you own them if they are inside your body, but someone else can own Investors in biotechnology firms are well aware them if they have been removed? Are isolated of the centrality of patents in the industry and will human genes man-made, patentable inventions or generally conduct a thorough due diligence prior to unpatentable products of nature? These were the taking the decision to invest in a company. Their issues before the nine justices of America’s highest main concerns are generally two-fold. Firstly, court in Association for Molecular Pathology v determining the company’s own IP position. In Myriad Genetics earlier this year. other words, does it fully own its IP? If not, has it obtained it through a licensing agreement and what Key biotech cases are the terms and conditions of such an agreement? Is there likelihood of a dispute over ownership? Judges and patent office officials on both sides of Have the patents been granted? How wide is the the Atlantic have decided a series of high-profile geographical coverage? How broad is the protection gene-related disputes. Here are some of the most and how efficient will they be to keep competitors important. from copying the product?

Secondly, investors will seek to determine whether the company will have freedom to operate, i.e. whether it will be able to commercialize the product without infringing on the IP rights of others. This will be important for investors to minimize risk of investing in a biotech company.

Conclusion

The business model of biotech firms often relies heavily on intellectual property rights, in particular patents, as they are often the most crucial asset they own in a sector that is extremely research-intensive and with low imitation costs.

Investors in biotech companies are generally well aware of the centrality of patents and the survival of such companies may very well depend on their ability to convince investors that they have a solid IP strategy and that risks are reduced to a minimum

7 www.iipta.com Diamond v Chakrabarty

In 1980, the Supreme Court of the United States ruled that a micro-organism that had been genetically modified for use in cleaning oil spills was patentable on the grounds that it did not constitute a “product of nature “. The Court set an important precedent in the area of patentability by ruling: “The laws of nature, physical phenomena, and abstract ideas have been held not patentable. Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter … Such discoveries are ‘manifestations of . . . nature, free to all men and reserved exclusively to none’. “ The decision was a close-run thing, however: four justices dissented, a portent of litigation to come.

www.iipta.com 8 Harvard Oncomouse

In 1984, the European Patent Office (EPO) received its first application for a patent of an animal: the genetically modified Harvard Oncomouse. Eight years later it granted a patent to the Harvard University researchers involved, a move opposed by an array of political parties, religious groups and environmental activists. The EPO ultimately upheld the patent in 2004 but ruled that it should relate to transgenic mice only, rather than all rodents.

Prometheus Laboratories, Inc v Mayo Collaborative Services

In March 2012, the Supreme Court ruled that Prometheus’ patent claims related to ways of optimizing doses of certain drugs used to treat specific conditions were invalid because they relate to a natural phenomenon. The effect of the decision Image of the BRCA gene (above). In the case was to make it harder for developers of genetic tests involving Association for Molecular Pathology v to obtain patent protection. Myriad Genetics the US Supreme Court addressed the issue of whether isolated human genes are Fast-forward to 2009 and the company found itself patentable. In a unanimous decision, the nine (along with the Trustees of the University of Utah) presiding justices ruled that naturally isolated DNA sued by a group of human rights campaigners is not patentable but that synthetic DNA, such as and patients’ rights activists. The plaintiffs, who cDNA, is patentable. included the Public Patent Foundation (PUBPAT), the American Civil Liberties Union (ACLU) and The plaintiffs prevailed at first instance, when a New Breast Cancer Action, challenged claims in seven York judge held that DNA is un-patentable subject of Myriad’s BRCA patents. Although thousands of matter. A quirk of timing saw the Federal Circuit genes are patented in the US, PUBPAT attorney Dan for the Court of Appeals consider the dispute twice: Ravicher says the groups targeted Myriad because once before and once after the Supreme Court of the company’s reluctance to license its patents to ruled in another highly-anticipated biotech case - competitors. Prometheus v Mayo - that Prometheus’s diagnostic method patents were invalid.

9 www.iipta.com By the time the Myriad case wound its way up to the Supreme Court, it had attracted almost 50 amicus briefs, from associations of IP lawyers and biotech researchers to venture capitalists and concerned citizens. The interest the case provoked is unsurprising considering both the issues before the Court and trends within the pharmaceutical industry. The dispute raises emotive issues relating to the ownership and control of genetic material just as pharmaceutical companies are desperate to obtain patent rights over medical innovations as the flow of blockbuster drugs dries up. The Court was asked to rule just as personalized medicine, offered via tests such as Myriad’s BRACAnalysis, heralds a breakthrough in the delivery of healthcare but also as healthcare budgets come under greater financial pressure than ever.

The question before the Court was whether isolated human genes are patentable

The Supreme Court’s nine justices took eight weeks to answer after hearing from both sides in the dispute. What they said was this? A naturally occurring DNA segment is a product of nature and, as such, cannot be patented. In contrast, so-called complementary DNA - an artificial product designed to mirror the coding parts of genes - is eligible for patent protection because it is not naturally occurring. “The lab technician unquestionably creates something new when cDNA is made,” they said. The impact on would-be gene patent holders was clear: within hours, the USPTO issued a memo to its examiners instructing them to reject product claims drawn solely to naturally occurring nucleic acids, or fragments of them, whether isolated or not.

The Court’s opinion, drafted by Justice Thomas, ran to just 18 pages. Its brevity was interpreted by some as a sign of the open-and-shut nature of the case; by others as evidence of the Court’s failure to get to grips with the difficult issues raised by the dispute. There were complaints that the case-specific ruling offered little guidance as to how the law should be applied in other biotech wrangles.

“The opinion is remarkably short given the complex legal and scientific questions that were raised; it fails to clarify in any meaningful way the difference needed to change natural material into man-made material that is eligible for patent protection,” lamented Jeffrey Lewis, president of the American Intellectual Property Law Association.

www.iipta.com 10 Myriad quickly sought to put a positive spin on the outcome of its four-year legal battle to protect its patent rights, announcing that the Supreme Court had upheld its patent claims on cDNA. Although conceding that the justices had ruled that five of its claims covering isolated DNA were not patent eligible, the company said it had more than 500 valid claims in 24 different patents over its BRACAnalysis test.

Plaintiffs declare victory for their campaign against gene patents

“The court rightfully found that patents cannot be awarded for something so fundamental to nature as DNA,” said PATPUB’s Dan Ravicher. Sandra Park of the ACLU Women’s Rights Project declared that the nine justices had struck down a major barrier to patient care and medical innovation. “Myriad did not invent the BRCA genes and should not control them,” she said. “Because of this ruling, patients will have greater access to genetic testing and scientists can engage in research on these genes without fear of being sued.”

So what does the decision mean for biotechnology scientists? Opinion is divided. Some, such as Nobel prize-winning gene scientist John Sulston, believe that patents do little to stimulate research. Backing the lawsuit against Myriad in 2009, Dr. Sulston said that gene patents could have a “chilling impact on research, obstruct the development of new genetic tests, and interfere with medical care … rather than fostering innovation “.

But Jim Greenwood, head of the US-based industry group BIO, said the decision represents “a troubling departure “ from decades of judicial and USPTO precedent supporting the patentability of DNA molecules that mimic naturally-occurring sequences, adding that it could create business uncertainty for a broader range of biotechnology inventions.

11 www.iipta.com But Jim Greenwood, head of the US-based industry group BIO, said the decision represents “a troubling departure “ from decades of judicial and USPTO precedent supporting the patentability of DNA molecules that mimic naturally-occurring sequences, adding that it could create business uncertainty for a broader range of biotechnology inventions.

That view was echoed by Courtenay Brinckerhoff of Foley & Lardner, who said that while the decision will have far-reaching and long-term implications for the biotech industry, the biggest immediate impact is the level of ambiguity it presents to scientists and their financial backers. “Although the Supreme Court seemed to draw a bright line between ‘naturally occurring DNA’ and ‘cDNA’, there are many other types of DNA constructs that are patented, such as short nucleotide probes and primers and iRNA constructs,” she says. It is unclear whether or how Myriad will be applied to other areas of biotechnology, such as proteins and antibodies, or to other pharmaceutical products, such as new chemical entities isolated from natural sources. Answering those questions will take years, noted Ms. Brinckerhoff, as the US Patent Office, Federal Circuit and Supreme Court develop a body of law around Myriad. “In the meantime, innovators, competitors, and investors must make important business decisions without knowing whether these types of patents will be upheld.”

Ms. Brinckerhoff and other attorneys also argue that Myriad sets the US apart from its economic rivals when it comes to rules on patenting genes. The EPO, for example, will grant patents for inventions related to gene sequences as long as applicants can demonstrate the industrial application of the sequence. Australia, Canada and Japan have similar rules, allowing the patenting of human genes providing they are isolated and the patent application explains how the genes are useful.

These jurisdictional differences mean that patent-chasing scientists will need to revise their IP strategies in the US. Now that USPTO examiners will no longer grant patents for isolated genomic DNA, biotech companies are likely to turn to trade secrets to protect their investments (a development that challenges the promise of the patent system - that disclosure is rewarded with a temporary monopoly).

www.iipta.com 12 Whether they can keep their secrets secret will depend largely on the ability of rivals to reverse engineer their discoveries. Biotech companies such as Myriad are also likely to guard more closely the valuable data they accumulate in the course of their research. Companies that already hold patents over genes will need to revisit their portfolios and consider abandoning patents rather than pay fees to maintain hollow IP rights. Businesses that have licensed-in patent rights may want to renegotiate the royalty rates.

But despite the challenges that the opinion has posed for the biotech industry, the company at the center of the ruling remains bullish. As patent owners and their lawyers mulled over the implications of the Court’s decision, Myriad itself was busy preparing patent infringement lawsuits. Less than a month after the Supreme Court issued its opinion, the company sued two businesses that launched rival BRCA tests in June. It also watched as politicians called on the National Institutes of Health to use so- called march-in rights to force Myriad to license its BRACAnalysis patents. The battle over biotech is far from over.

What is the trend of patent filing in Biotechnology Sector?

India is among the top 12 biotechnology destinations in the world and has the third-biggest biotechnology industry in Asia-Pacific. India’s biotechnology industry is evolving rapidly and growing at a compound annual growth rate of 20%. As per Biospectrum’s 11th annual Indian biotechnology industry survey, the Indian biotechnology industry grew by 15.1% from 2012 to 2013, increasing its revenues to $3.81 billion.

13 www.iipta.com . Further, the market size of the sector is expected to increase to $11.6 billion by 2017. This rapid growth is attributed to a range of factors, including heightened demand for healthcare services, intensive R&D activities and strong government initiatives. India is a huge market for biotechnology products and services due to its billion-plus population and increasing economic prosperity. The domestic industry is now moving into innovation, with companies focusing on strengthening their R&D development capabilities. In its 12th five-year plan, the Indian government aims to spend $3.7 billion on the biotechnology sector, compared to $1.1 billion in the 11th five-year plan. The Indian biotechnology industry can be divided into five key segments: bio- pharmaceuticals, bio-services, bio-agriculture, bio- industrial and bioinformatics.

Patent filing trends

The 2014 Indian Patent Office (IPO) annual report stated that approximately 43,000 patent applications were filed between April 2013 and March 2014. Over 2,300 of these related to biotechnology and other related fields (eg, biochemistry, microbiology, biomedical devices and chemical or biological inventions related to traditional knowledge. Although the report indicates no criteria for patent selection in these fields, it gives a preliminary indication of biotechnology patenting activity in India.

•The bio-pharmaceutical segment accounted for largest revenue share of 64 per cent in India biotech industry, during FY16.

•In FY16, the bio-services and bio- agriculture segments accounted for 18.0 per cent and 14.0 per cent of the biotech industry, respectively.

•India is becoming a leading destination for clinical trials, contract research and manufacturing activities which is leading to the growth of bio services sector.

www.iipta.com 14 Why IP industry have shortage of engineers?

Intellectual property (IP) protection is absolutely critical for protecting a company’s proprietary designs, processes, and inventions that, if leaked to competitors or made public, could ruin a company’s market advantage and reputation or lead to costly litigation. Engineers are often on the front line of innovation. As consultants, they also share intimate details of their clients’ designs, materials, products, and processes—highly confidential work. Some scientists, however, are more interested in focusing on the technology and don’t always realize the finer (or more nebulous) points of protecting IP.

According to the World Intellectual Property Organization (WIPO), intellectual property refers to “creations of the mind: inventions, literary, and artistic works, and symbols, names, images, and designs used in commerce. IP is divided into two Why does it matters to the categories: industrial property, which includes inventions (patents), trademarks, industrial Engineers? designs, and geographic indications of source; and In the business world for intellectual property copyright, which includes literary and artistic works (IP) and patents in particular, I see a gap in the such as novels, poems and plays, films, musical information provided. In the media, there is talk of works, artistic works such as drawings, paintings, patent trolls and patent wars; for people like me, photographs and sculptures, and architectural there are esoteric high-brow tomes reflecting deeply designs. Rights related to copyright include those of upon the impenetrable depth of IP case law. There performing artists in their performances, producers are also business books about commercialisation of phonograms in their recordings, and those of that mention IP and what forms it takes. None really broadcasters in their radio and television programs.” grapple with the everyday misconceptions and Engineers, then, are professional innovators who pitfalls in relation to IP. So without any footnotes, work in the realm of industrial property and are references or other thickeners that would turn my often the first involved in creating a proprietary words into a viscous glue, I set forth my personal design or invention. views on IP, with the usual disclaimer that nothing here constitutes legal advice and that legal advice should be taken. Everything is general and, of course, there are exceptions to all generalities. Can you name any inventor who is not famous? Or can you name any female inventor other than Marie Curie?

15 www.iipta.com Many cannot, so if you are not an inventor and do not know any inventors, it is unlikely you have seen IP such as patent in action in everyday business life. Some people may have copyright, trademarks and design materials but other than express the view that it is somehow their stuff, they cannot usually properly articulate what exactly they own. More particularly, it is probably clear that in a lot of cases that when analyzed there is no protected and possibly no protectable IP, often because it has been lost.

Lack of role models has created lack of awareness. This, in turn, means while you might suspect you have some form of IP, there is a difficulty expressing what it might be. The upshot may be that the IP is not being properly protected or commercialized. More likely, the IP protection boat has been missed. For example, something that was patentable is now not because it went into the public domain.

Confidential information, ideas and know how have not been protected by proper contractual arrangements. Brands have been left unprotected or worse still all user rights are with a distributer or retailer.

Thus, engineers need to be made aware of the prevailing importance of the IPR in their professional front. They should know that it’s just not about being in their core sector but also about protecting what they do in the core sector.

IPR has always been a key tool for various industries, and people from technical field should been enlightened about what lies beyond their core grounds. IPR industries have always welcomed the technical in their industries, moreover growth provided to them by our IP sector is marvel.

Why GlaxoSmithKline would be needing more patent Engineers?

The Company surely needs patent engineers because with the series of patents being filed and with such maximum number of patents, Qualcomm surely need to keep more patent engineers who will likely to be working on the protection of patents.

www.iipta.com 16 Role of Patent Engineer in a firm

Understanding client: Application drafting is impossible without meeting and understanding the client’s invention. The Patent Engineer performs this task as he is supposed to draft the application.

Creating application: Indian patent law restricts the patentability of certain inventions like software, business methods etc. Application should be drafted according to those rules.

Managing complete team: This professional generally manages Patents department. Main duties are:

•Designating different steps of prosecution to right team

•Keeping check on completion of activities

•Coordination with rest of the team: Patent Engineer studies trends of the current market. For proper functioning of several departments, Analysis report generated by patent engineer is important.

Where do Patent Engineers work?

Patent Engineers are commonly seen in the innovation industry. Inventors & Patent Engineers play significant role in these companies.

‘Inventors invent and patent engineers protect’

17 www.iipta.com The companies innovate and hire professionals to work on these inventions. As I discussed earlier, Patent Engineer will draft application to be field in patent office. Also, he will protect application from infringement. A patent engineer is a patent law professional. While not a lawyer, patent engineers have a keen understanding of patent law and the patent application process. Engaged by both corporations and individuals, these employees provide administrative and engineering support, in an effort to efficiently work through the patent application process.

A patent engineer, an applicant must be an extremely skilled writer, as this role requires the writing and interpreting of many technical reports, particularly in mathematical and diagram formation. Additionally, the candidate must also possess a strong reasoning ability. It is imperative that challenges are identified and resolved through significant research (i.e. data collection, fact establishment and the drawing of valid conclusions).

Why Engineers can start their career as a Patent Engineer?

If somehow they get a job, recession becomes next sticky point. Now, Engineers are striving for a promising career. But patent is a fresh field for these Engineers and chances of failure are nil. Lets discuss some differences between Patent & software Engineers that might help you in choosing your career.

Following reasons to opt for patent engineer:

A. Salary Growth

B. Competition

C. Reputed job

D. Career stability

www.iipta.com 18 After considering all these points I can conclude that Patent Engineer can learn new things, salary hike is perfect & job will be stable. However, Software Engineer might be affected from trends and salary may not satisfy the candidate. What I personally feel is job environment is important for an employee and in tough competition you will never get that. So, choose wisely not for today but for the future.

A patent engineer or patent scientist is a patent professional who is typically involved in preparing and prosecuting patent applications. The terms are usually applied to patent professionals with scientific or engineering backgrounds that do not require either attorney or patent agent qualifications, but still work with patent applications. In general, the position involves many of the technical aspects of patent prosecution, including doing background and prior art searches, drafting the specifications and preparing reference figures for patent applications, and giving technical expertise during invention evaluation. Positions of this nature may focus a great deal on research and development while including patent considerations, emphasizing their technical background rather than legal or patent agent qualification.

Jobs growth in the technology sector in beating the rest of the economy by three to one and with #MakeInIndia campaign roaring high, many companies are setting up their facility in India. With increased automation, jobs of IT engineers are becoming limited but there is new class of engineers- PATENT ENGINEER who are now in more demand in India. In the recent job fair conducted at IIPTA, CPA Global- India’s No. 1 patent outsourcing company, has offered six figure salary to fresher’s patent engineers.

Patent Engineer helps in careful understanding of new technological innovations. He participates in conducting technological search on various databases. It help other inventors or engineers get patent protection on their invention by collaborating between inventors and patent office. Most patent scientists or engineers hold at least a bachelor’s degree in a scientific or engineering discipline, with many holding advanced degrees such as Ph.D.s or M.D.s. Their role is to carefully understand technological aspects of invention, draft patent application and work with patent office.

19 www.iipta.com Getting Started as Patent Engineer

All engineering students with suitable knowledge of patent law can apply for the job as Patent Engineer in various companies across various industries like Yahoo, Motorola, Google, Tata motors, Samsung, IBM etc.

Planning for success as Patent Professional

As most of the engineering students are unaware of new career in patenting, so demand is high and supply is less. This results in high income and good growth. This career will require you to file patent applications. Many students at IIPTA who started their career at 3.5 lac in 2012 are now earning 15 lakh package. Read Story here.

Targeting 10 Lac per annum Salary Package

www.iipta.com 20 How UCB Biopharma is highest patent filer in India?

UCB Biopharma, did not do such mistakes while filing a patent application, what companies usually are mistaken when they file a patent application. A patent search is just that. A search of patents and published patent applications. You hire trained professionals to do a patent search, but the patent search does not typically include a product search online. That is the responsibility of the inventor. So for goodness sakes, if you come up with an invention the very first thing you should do is see whether it exists and can be purchased online or in stores. If it can be then you shouldn’t move forward. If you can’t find it online don’t celebrate and rush off to hire a patent attorney. Do your own patent search? Then once you confirm that you can’t find it on the Internet and you can’t find a patent reference, then proceed to a professional patent search with an opinion. That could mean you need to start over fresh with a new application done properly. The trouble now With that in mind, here is a list of the top 5 mistakes is that you have been selling the invention thinking inventors make, followed by discussion of what you were safe, but then learn that the application you should do to move your project forward in an you initially filed was so defective that it was as if appropriate and responsible way. you filed nothing.

1. Sold the Invention 2. Publicly used the invention

NOT TO DO: In the United States you have 12 NOT TO DO: Public use of an invention can create months from the time the invention was first sold the same problems as a sale or offer for sale. If you within which to file either a provisional patent use an invention publicly you have 12 months from application or a non-provisional patent application. the first public use to apply for a patent. If you miss this 12 month window you will not be able to obtain TO DO: Even if you are aware of this rule and you a patent on that which you used publicly. Of course, do not sell or offer your invention for sale before if you want foreign rights you need to apply first you file a patent application there can still be traps before you use the invention publicly because in that await you. For example, if you file a patent many countries there is no grace period of any kind. application that fails to adequately disclose your Remember also that the better advice is simply not invention and then you start selling you may find to publicly use your invention before you file a out later that the application you filed did nothing to patent application that adequately describes your establish priority. invention.

21 www.iipta.com 3. Terrible provisional patent applications

NOT TO DO: A provisional patent application is a great tool when it is used properly, and devastating when it is not use properly. A provisional application is extremely easy to file because all you have to do is complete a cover sheet and then attach a description of your invention. There are no requirements that the description be in a particular format, and the truth is the Patent Office does not even look at the provisional application. This has led to many non-lawyers and non-law firm vendors offering provisional patent application services for just a few hundred dollars.

TO DO: Unfortunately for the unwitting inventor who uses a bargain basement, deep discount service provider, the law requires that a provisional patent application describe the invention with the same level of detail as is required of a nonprovisional patent application. This means that while you can easily get a provisional patent application on file and have a “patent pending” if you do not describe the invention with the level of detail and sophistication required by the patent laws your provisional application is worthless.

Even worse, because you had a patent application pending you may have done things, such as using or selling your invention, as mentioned above. This is a nightmare because if you filed a provisional application that was not specific enough and then used or sold your invention you have forever forfeited foreign rights, and the application you filed may not be able to be used later to support a filing date. Worse yet, a badly done provisional patent application could even conclusively prove that as of the time that you filed the application you did not have a completed invention. Even worse, if you first start using or selling your invention and then you file a provisional patent application you may think you are safe. But if the disclosure in the provisional patent application is so poor it won’t help. By the time you get around to filing a nonprovisional patent application it is now more than 12 months since your first use or offer for sale, which means you could be forever prevented from obtaining rights even in the United States.

www.iipta.com 22 4. No professional patent search

NOT TO DO: I hear all the time from inventors who have done their own patent search and have found nothing similar to their invention. This is the first warning. With well over 9,000,000 US patents and counting, and many millions of published application that have never been patented, it is virtually impossible to do a patent search and not find something relevant. Patent searching is an art more than anything and if you are not intimately familiar with how the Patent Office classifies inventions and how attorneys characterize things then you would never find what you are looking for even if there is a patent out there that covers exactly what you invented.

TO DO: Obtaining a patent is an expensive undertaking, and saving a few hundred, or even a few thousand dollars by doing your own patent search is just silly. Sure, look for yourself first. I even have an article explaining how to do your own search (see Patent Searching 101 and Patent Searching 102: Using Public PAIR). If you find something then you save the money you would have otherwise paid, but just because you do not find anything does not mean that there is nothing to be found. Why spend many thousands of dollars seeking a patent when a professional patent search would have shown you that a patent would likely not be awarded?

5. No Internet search

NOT TO DO: Over the years I have preached to inventors over and over again about the importance of doing a patent search. Earlier in my career I would hear from inventors who would say that they searched the Internet thoroughly and could not find the invention so they want to move forward.

TO DO: Then when someone else has the same or similar idea/invention (which will ALWAYS happen) a search is done, the prior art is found and the decision is made that it isn’t worthwhile to commercialize if a patent cannot be obtained. There are many gadgets not on the market because no patent protection could be obtained because it was patented many years earlier. Thus, by not repeating these mistakes Phillips was able to file such large number of patent application in India.

23 www.iipta.com How Engineers can earn six figure salary?

If you have good technical experience and you add on knowledge of patent and IPRs, you can easily target salary of 10 lac per annum. For example, if you have experience of 2 years in software testing or programming and you can only earning Rs. 18000 per month. So you will be considered that you have good technical expertise and now you know patent laws, so you will be upgraded to salary of 27000 per month for first year and Rs. 40,000 per month salary in second year. If you continue upgrading your knowledge and experience third year can again double your salary. A patent engineer usually works for a patent attorney or agent to assist with preparing and prosecuting patent applications. A patent engineer has at least a bachelor’s degree and will often have a masters or even a PhD (particularly in life sciences). Notably, they do not have a law degree or patent agent qualifications, though they will often work towards getting one of those credentials once they start in the profession. The most common tasks they perform are prior art searches and drafting initial patent specifications that describe the invention in detail. It is also common for patent engineers to assist the inventor with technical aspects of the invention that may not be fully fleshed out yet, though they rarely get formal credit for doing so.

How you can build a Global Career?

Working abroad is a good way to boost your resume. Aside from providing travel opportunities, a global career can also hone your marketable skills, increase your salary by as much as $25,000 assuming you’re bilingual/multilingual, and make you a better person. However, it can also be intimidating. With hundreds of countries in the world, plus all the possible jobs you can take abroad, you may find it difficult to chart out a global career that suits you. To make things easier, here’s a guide to help you get started.

www.iipta.com 24 Evaluate Your Career Goals Test the Waters

Before anything else, think carefully about what a Theoretical knowledge is good and all, but there’s global career can do for you. Will it give you an nothing like actually visiting another country to test edge among your peers, in your company and/or in the extent of that knowledge. Before you decide to your industry? Or can you reap the same benefits live in that country for good, schedule a preliminary working within the U.S. for American companies? visit first. This way, you can get a “feel” for where you’ll work. It’s also a great opportunity to immerse You don’t necessarily have to leave the U.S. to yourself in the culture and practice your foreign pursue a global career. Now that it’s easier than language skills while you’re at it. ever to find remote work opportunities, you can still carve out a path for yourself without going out of the country. However, if you’re set on physically transferring abroad for work — whether temporarily Know Your Way Around or permanently — that’s when you follow the next steps. Since you’re staying abroad for a relatively long time, it’s a good idea to know the important places Learn a Second Language in a foreign country. Find out where your country’s embassy is, as well as the locations of its banks, If you think there’s no use for that non-English medical services, post office, etc. You never know language you know, think again. The demand for when this knowledge will come in handy. interpreters and translators is projected to grow 29 percent by 2024, so don’t throw away those foreign language materials yet.In case you don’t have a second language, however, don’t worry. You can still learn basic conversation with online courses. Once you’ve mastered the language, practice it by conversing with native speakers, so it’ll soon become second-nature to you.

Learn the Culture

There’s more to foreign culture than traditions and taboos. You can also ask questions such as:What’s the current political/economic climate in the country?

What is the country’s general attitude toward foreigners?

Will you get by with a mastery of English alone, as in the case of the Philippines, where most people can speak at least basic American English?Or will mastery of the local language be mandatory, as in the case of East Asian countries?

25 www.iipta.com Take Courses with a Global Approach

Granted, you don’t need a degree in international relations to thrive in a global marketplace. But academic knowledge about a specific country/ region/culture can be useful. For example, you can take a free online course on international relations to get you up to speed.

Don’t Be Afraid to Use Technology

LinkedIn isn’t just for finding work opportunities. It’s also a great way to network with contacts from outside the country. However, be careful when applying to foreign companies. Some of them deliberately misrepresent themselves online to lure unsuspecting applicants into a shady business. Check their online presence, ask about them in forums, and take 100 percent positive reviews with a grain of salt.