INTELLECTUAL PROPERTY: THE PATENTING PROCESS

Introduction

An important consideration in the early steps of this project was the potential implications of introducing a new technology to the real world, that is, extending scientific discovery beyond an academic stage. As the boundaries of scientific knowledge are stretched and new ideas come to light, the notion of intellectual property (IP) becomes a prominent concern. Our team recognized the potential implications of IP in relation to both our scaffold-AFP and circularized-AFP products should they introduced into real world applications. As such, QGEM 2015 decided to initiate the protection process and apply for a provisional patent on our on our project. Research was conducted to further our understanding of effective navigation of required procedures, regulations, and implications of the patenting process. This included consideration into the following components:

• How can IP protection be applied to our research?
• What are the steps and requirements of obtaining a patent?
• What are the advantages and disadvantages associated with IP protection?

As the team gained greater insight into IP issues, perspectives changed and it was decided to defer the application. In this report we describe the experience, detail our approaches and methods and highlight the reasoning behind our decision.

Methods

Consultation with IP Experts

Our first point of contact in this endeavour was Parteq, a non-profit organization affiliated with Queen’s University. This group is composed of experts in commercialization, financing, and intellectual property processes that are dedicated to supporting researchers in protecting their discoveries and making them accessible to the public. Our team met with Patent Agents and Commercial Development Managers who provided us with background information on the patenting process by means of a public presentation and personal consultation about our project. We were further directed to a Patent Librarian at Queen’s University who assisted us in investigating which components of our project contained unique IP and how these could be effectively protected.

Independent Patent Literature Review

As part of our investigation, the team conducted a full patent search to confirm the novelty of our work (and thus its eligibility for patenting). This was completed separately for both the scaffold-AFP and the circularized-AFP projects. The process involved reviewing all patent applications in addition to approved patents worldwide for all projects related to our two proposed technologies. We used two major patent search engines, PatentLens and Espacenet. We also developed an in-house system for running and tracking an efficient and comprehensive team search.

Learning Experience

Overall, the investigation revealed that both our circularized-AFP and scaffold-AFP system would likely be eligible for patent protection. Below are the highlights of the patenting process and a summary of findings specific to our project.

General Considerations

• Patentable technologies must meet requirements of novelty, utility, unobviousness, and economic benefit
• There is a maximum grace period of 1 year after the date of publication during which the inventor can file a patent
• Inventions developed at university institutions can be owned by the institution if the inventor elects to have financial support in the patent application. In this case, researchers are listed as inventors rather than owners
• If researchers elect to become owners of the IP themselves, this must be individually funded, a rather expensive investment
• To file a patent, an inventor teams up with a Patent Agent or Patent Attorney who assists with writing the application according to the specifications of the inventor and helps mediate the submission-review-approval process
• Provisional patents allow inventors to initiate the patenting process quicker (with a simpler application) and file for a full non-provisional patent later (within the year grace period)
• Patents have a classification system that uses ID codes that relate to the subject area of the patent. These are determined using key word searches and then fully exhausted to conduct a comprehensive search
• Confidentiality during technological development is a crucial part of the process; teams often draft and sign non-disclosure agreements at the beginning of a project to ensure this is upheld

Project-Specific Considerations

• There is no evidence of prior IP protection for any circular AFPs or scaffold-anchored AFPs leading us to conclude our technologies are likely novel
• The following related technologies have been granted patents or are in the application stage:
  • Modified and unmodified AFPs
  • Intein-mediated splicing (including circularization)
  • Uses of AFPs to prevent ice recrystallization in ice creams.
  • Engineered coiled-coil domains
  • Self-assembling protein scaffolds
• Multi-component inventions can be protected as individual components or by protection of the entire technology. For example, a patent for the scaffold-AFP complex would include the combination of the scaffold proteins, antifreeze proteins, and the coiled-coil attachment system as the individual components are already protected

Final Remarks & Perspectives

Patenting is a necessary consideration when bringing new technologies into industry and is a crucial part of achieving investments sufficient to market and produce one’s creation. The team recognizes the merits of pursuing patent protection for potential commercialization of the inventions described in the QGEM 2015 research project. However, several additional factors led to a change in direction and the ultimate decision not to pursue a patent for our work. These included:

• The need to generate research results
• The time implications of the patenting process
• The implications of patenting on future research to be performed by Queen's

Overall, this experience allowed the team to gain an understanding of IP protection, the process of patenting, and considerations of doing so. This information will not only be useful for individual team members in their continuing careers in science and biotechnology, but also for future teams who may continue in this endeavour.