We join CompanieBee a few days later, mulling over their discussions with Daniella, the company’s IP strategy attorney.
“So if Vijay or I started the laboratory work when we were at the university and now we apply for a patent, that means it will be a joint thing and we are at the University’s whim?” Elle asked. “Not necessarily” Jan replied. She reminded them of Daniella’s point that it would depend on what was done where, when and how it relates to the patent claims. Daniella had also explained that even if the university had ownership rights for some aspects of the work, CompanieBee could negotiate with the university. For example, the university could agree to assign the inventions to CompanieBee or grant the company an exclusive license to the technology. Vijay had spoken to the university technology transfer office before he left the university. They had been quite enthusiastic about his start up, so maybe he thought to himself, this solution would be a reasonable way forward. He put on his to do list to give the office a call the next morning and set up a meeting.
Vijay returned to his desk after the morning meeting. He reviewed last week’s tests on the new formulation. One particular combination stood out. He was very excited because he had tested a large number of formulations that had not shown any improvement. He opened his laptop and began typing. Elle poked her head out of the adjoining lab area. “What are you typing Vijay?” she asked. “The great formulation results – I’m typing up a manuscript to submit to the journal Science. I want to publish our great results and get us some publicity before we start looking for more funding.”
“I think you might have to hold off a bit,” Jan interjected as she joined the conversation. She reminded them of the strategy they had mapped out with Daniella. First the patent applications had to be written and filed, both the initial filing on the assay and then the one for the formulation. Once those were filed, they could think about publishing the results. Part of the strategy, as Daniella explained to them, was to avoid giving potential competitors a leg-up on coming up with a competing formulation by publishing too much too early. The patent application would publish soon enough – 18 months after filing. “In that case,” Vijay spoke up, “I’ll get started on the tables and descriptions that Daniella asked me to write up for the patent application.”
. . .
A few days later, Daniella stopped by to discuss the progress on the formulation patent application. She walked them through the outline of the application and the claims she had drafted. The claims fell into a pattern – some covered large numbers of formulations – either because they had a large range of concentrations for each ingredient or they covered many different combinations of ingredients. Other claims were much narrower and some just covered the best combination of formulation components in specific concentration ranges. She explained this strategy with a diagram – an inverted pyramid. The broader claims would help them protect against encroachment from competitors making similar formulations. However, these broad claims could be more susceptible to challenge because they might encompass a variation already found in the prior art. On the flip side, the narrower claims would give a competitor more leeway to design around and find a formulation of their own, but would prevent out-in-out copycats and would be stronger to challenges against prior art.
“Speaking of prior art,” Elle piped up, “did you see the results published by the Jackson lab in the last issue of Drug Times? They have an assay that has some similarities to our BXC assay.” Jan looked worried. “What will happen with our patent application we just filed?” she asked.
“It will depend on whether the folks in the Jackson lab also filed an application, what it describes and when,” Daniella explained. “The Drug Times article isn’t prior art because it published a few days after we filed CompanieBee’s application, which is lucky.” She explained that only publications that come out before the filing date would count as prior art. However, she also explained that the US is on a first-to-file system, which means that if the Jackson lab filed a patent application prior to their article, the application could act as prior art to CompanieBee’s application.
Food for thought:
- When will CompanieBee know if the Jackson lab filed a US patent application?
- Are there circumstances where the Jackson lab patent application would not become public?
- If the Jackson lab published the article before filing a patent application, could this interfere with the Jackson lab’s ability to get a patent on the assay?