Patents

Introduction

Our device for detecting CTCs in blood samples could at some point be very interesting for companies investing in cancer diagnostics. To find out more about whether it would be possible to obtain a patent for our project, we talked to Dr. Christina Dittrich from ETH transfer. We wanted to know about the basics of patent law and the steps required to get a patent.

Summary

In Summary from the Interview with Christina Dittrich, we got the following insights:

• To have a chance to get a patent an idea has to be novel, useful and inventive.
• An idea is only considered novel if it has never been published/mentioned before, e.g. even a comment in an outlook of a poster could possibly destroy the novelty of an idea.
• If we would have liked to patent our project, we shoud have applied before we published anything on the wiki. Now it would be too late.
• Patent applications cost a lot. That is why a system (PCT (Patent Cooperation Treaty) system) evolved where you can simultanously apply for patents in many different countries, handling in only one single application.
• The process of getting a patent can take up to ten years.
• Normally it is possible to patent microorganisms, as long as they contain synthetic parts.
• When e.g. the ETH owns a patent and a company wants to commercialize the technology, then the company must negotiate a license from ETH. So if somebody invented something and ETH owns the patent for this invention, the inventor has to pay iin case he wants to use his invention to commercialise.

Talk with Dr. Christina Dittrich from ETH transfer

What is a patent?

The prerequisites for obtaining patent protection are that the invention is useful (industrially applicable), inventive and novel. Therefore, a publication of some results before the patent application date is novelty-destroying. This is the case for our device, since specifics about the device have been published on our project website. Publishing is defined very broadly. Clearly, having data available in a scientific journal or on the internet constitutes publication. However, also if ideas are published in a format that may be highly inaccessible to others, such as a master thesis available only as a hard-copy in a university library, still constitutes a novelty-destroying publication. Christina Dittrich also recommended not publishing anything on social media and to show the invention only to people who are bound to confidentiality (e.g. via a Non-disclosure agreement). In the USA, however, it is still possible to get a patent if an application is filed within one year after disclosure of the invention by the inventors (the so-called grace period). But having the possibility to obtain protection in the US alone because of prior publication, might be detrimental to the commercial success of a product. Especially the development of pharma products needs substantive investment which can only be returned if the product enjoys protection in many countries.

A patent contains various claims describing the invention. During the course of a patent infringement lawsuit, these claims are examined by the judge to determine whether an infringement has taken place.

The cost of a patent application is another important issue. Christina Dittrich noted that the cost of an application depends on whether a patent is desired in Switzerland, the EU, the USA, or worldwide. The drafting and filing of an application would already cost several thousand francs. In the case of something invented by ETH employees, ETH transfer (the technology transfer office of ETH) will evaluate the invention disclosure and jointly with the inventors decide whether a patent application makes sense in this specific case. If the decision is in favor of an application, the costs of the application will be covered by ETH.

How to get a patent?

The timeline for applying for a patent starts with handing in an application to a patent office. Upon filing, the application receives a priority date. The patent office then usually determines if the requirements of patentability are satisfied, meaning that the invention is patentable subject matter, that it is novel, non-obvious for an expert in the area and useful. Within one year after the priority date, it can be decided if patents in other countries should be applied for. When applying within one year after the first patent application, other countries acknowledge the priority date of the first application. However, applying for patents in many different countries is really costly. That is why a special system has been set up: the PCT (Patent Cooperation Treaty) system, which provides a unified procedure for filing patent applications. At present, the PCT has 148 contracting states. Once the initial search is done and the PCT phase is over, the application has to enter a national phase and can only be granted by a national patent office. Having to translate the application at that point and to engage local attorneys for the proceedings in front of the national patent offices increases the costs exponentially. The patent will be published 18 months after the priority date.

Finally, two, five or maybe even ten years later, the patent may be granted or the application rejected. If it is granted, it is valid for 20 years starting from the filing date.

What if somebody copies the idea while it is waiting for a patent?

Christina Dittrich explained that if one finds somebody who is commercially using the invention that is subject of a pending patent, the inventor can send a warning letter to the alleged infringer. If the patent is then granted later on, the inventor can ask for damages from the company through legal action retroactively.

Would MicroBeacon have been patentable?

When we asked which part of our project would have had the most potential for receiving a patent, she suggested patenting the whole device. For our MicroBeacon coli test, we could have claimed a patent on the whole genetic circuit or the method of cancer cell detection by the engineered bacterium. It would have been advisable to provide a step-by-step description of the method which is specific enough to be patentable, but general enough to not allow for slight variations on the idea to lead to circumvention solutions. In general, our whole project or parts of it would most probably have been patentable.

We also wondered if it was possible to patent microorganisms, as there has been quite a lot of polemics on this topic. According to Dr. Dittrich, for engineered microorganisms as the ones in our project it has not been difficult to obtain protection so far, as long as they fulfill the criteria of novelty, inventiveness and usefulness.

Who gets ownership of the patent?

iGEM is a team project, and as such, this idea belongs to the whole team and not to a single individual. When several people develop an idea together and want to patent it at ETH Zurich, an invention disclosure is filed. All the people who contributed towards the invention are listed as inventors in the patent. Any income from licensing will initially be used to cover the costs of patenting and marketing, any remaining income will be distributed as follows: one third goes to the ETH, one third to the professor's lab, and the remaining third is divided amongst the inventors. ETH Zurich owns the inventions made in the scope of an employment at ETH. However, students’ inventions belong to the students themselves because they do not have an employment contract. In the case of an employed co-inventor (e.g. a supervisor), both parties are joint owners. However, the students may transfer their rights to ETH Zurich and will then be supported and participate in any income on the same basis as ETH employees.

When the ETH owns a patent and a company wants to commercialize the technology, then the company must negotiate a license from ETH. So if somebody starts an ETH spin-off and wants to use a patent owned by the ETH, they also have to negotiate a license contract with ETH.