Last Updated on
March 28, 2023
By
Excedr
The concept of intellectual property (IP) can be challenging to define, but as a life sciences or biotechnology company, it’s essential to consider as you’re building your business. Regardless of the specifics of your technology, you are entitled to ownership over your inventions.
In the greater scientific community and academia, many people believe in sharing ideas with others because they all are pursuing the same goals of scientific progress, but in the corporate world, this isn’t always the case; there is more to it.
The pharmaceuticals and biotech industries are well-known for supporting the protection of inventions, because IP protection can lead to significant increase in company value and the future possibility of generating revenues that can cover the huge costs of developing new healthcare-related technologies.
We want to help you make sure that your intellectual property is safe from the beginning.
For a deep dive into the types of intellectual property that might be relevant to your start-up, check out our article, The Legal Tools of IP & Why They are Important to Your Startup. That said, we’ll give you a brief summary below.
Patents, trade secrets, trademarks, and copyrights are the main designations for the intellectual property you’ll be using. Patents grant you legal property rights over your inventions and cover new technology, significant improvements to existing technology, design/ornamental elements of a product, and newly discovered or hybridized plants.
Design patents provide protection for 15 years after the date when the patent was granted (design patents issued from applications filed before May 13, 2015 have a 14-year term), and product and plant patents last for 20 from application.
Trade secrets are protected primarily under state law. Generally, a trade secret is information that has value because it is kept secret and is subject to reasonable efforts to maintain its secrecy. Trademarks can include branding elements of your products like insignias, logos, or taglines. As long as it’s in use, a trademark can be protected through federal, state, and common law.
Copyrights can be used for works of authorship, like screenplays, songs, and software. Once registered, copyrights last for the life of the author plus 70 years; for anonymous or pseudonymous works the shorter of 95 years from first publication or 120 years from creation. Copyright would apply to your research publications.
In order to get maximum legal protection for your intellectual property, you have to apply for the proper protection with the appropriate agency. For patents and trademarks, it’s the US Patent and Trademark Office. The corresponding agency for copyrights is The US Copyright Office.
As a pharma or biotech company in the life sciences, there are various steps you can take to protect your IP. Let’s review some of them below.
Even if you already have a corporate lawyer, finding someone to help you with intellectual property concerns is important. A patent attorney or law firm can help you strategize about what you need to protect, put together your applications, and step in if any legal issues arise.
If you’re using intellectual property, there is no question you’ll need help managing your usage, regardless of whether it belongs to you or you are licensing it from someone else. Patent law is complex, and it is considered best practice to navigate those waters with the help of a legal professional who is well-versed in patent and intellectual property law.
The earlier you start thinking about your intellectual property the better. Even if you’re just playing with ideas, think about whether what you’re creating is completely new, and whether it’s an actual product, branding, or design.
Most of the intellectual property you create will be central to your work. You don’t want to run into legal issues as your business grows more complex.
Spend some time looking at examples of patents and trademarks to see how you can classify your intellectual property. If there is anything to which you’re interested in securing IP rights , check to make sure no one else has already secured a patent to something similar. Otherwise you might be infringing on their patent (or other protected IP right) and be subject to an infringement lawsuit.
If you want maximum legal protection for your IP, you have to apply for it. Your lawyer will help you navigate the process and assemble all of the materials you need. Different materials will be required depending on the type of IP protection you are looking for (patent, trademark, or copyright).
For example, with a patent application, you will need to include evidence of the patent’s patentable subject matter, its utility, novelty, non-obviousness, and the patent’s enablement (i.e., whether someone skilled in the same field can reasonably use or make the invention based on the disclosures in the patent). In other words, this documentation should illustrate a description of and claims to the patent you’re applying for.
Additionally, you will be required to include drawings when necessary, a declaration or oath, and to pay the necessary filing fees. If you want to obtain a patent or trademark in the US, you will file your application with the United States Patent and Trademark Office (USPTO).
According to the agency, patent issuance can take anywhere from 14 to 36 months , so correctly timing your patent filing is all the more important. Because the USPTO will require a large amount of documentation, it is clear why it’s important to identify your IP early and keep meticulous records of it. This documentation will also be helpful in the later stages of making deals with investors.
Don’t panic. If you’re using someone else’s IP—or someone else wants to use yours—there are options. First, if you think you might be using someone else’s IP, it may actually be better to work with your lawyer to see if there is anything you can modify so that you are no longer infringing on another patent.
If you can’t because another patent is instrumental to what you’re doing, you can work on licensing it from the patent holder. The same is true if someone wants to use your IP. Licensing agreements can be a smart way for companies to generate revenues. Often, it is best to license technology to establish goodwill with other companies.
There are two ways of legally using another patent: licensing and assignment. Licensing allows patent holders to grant rights to another person or business to use their patent during a designated period of time or in a particular field. Assignment transfers ownership of the patent to another party. Both licensing and assignment can be excellent tools to guide your patent strategy.
Typically, the patent holder (or licensor) will charge royalties during this time, but the licensee is entitled to make profits from whatever they are selling that uses the patent.
Licenses can be exclusive, which means that the licensor may not license others during the term of the license, or non-exclusive, which means that the licensor may also license the patent to others.
As a hardworking life sciences startup, you may be wondering why anyone would ever give up rights to their patent, as veterans of the industry so widely support patent protection. Patent licensing is particularly useful for anyone who has created something innovative but does not have the capacity or interest in manufacturing it at scale, allowing them to protect their rights to the patent while generating revenue.
By granting a license to a company that can, they will stand to make an actual profit. There may also be different fields of use, all of which you do not have the capacity to exploit. Licensing could generate revenue in that case to a licensor that may not have made money in a different field.
Licensing can also prevent lawsuits over patent infringement, which can be expensive and may not always have the desired results. Find out more about licensing from UpCounsel.
In contrast to licensing, patent assignment allows a patent holder to transfer ownership of their patent to another entity. This is usually done in exchange for a one-time sum of money. After that, the assignee can start profiting from the patent and pursue legal action over future patent infringement. You can learn more about patent assignment from UpCounsel as well.
As an early-stage biotech start-up in the life sciences industry, you must consider how you are protecting the inventions on which you have worked so hard.
Whether you are looking to patent an invention, copyright a software interface, or trademark your logo, an intellectual property lawyer is essential in helping you navigate the complicated application process, securing useful intellectual property protection, and crafting a sound IP strategy.
If you are interested in using someone else’s IP, or you want to share yours, patent licensing and assignment may be good options for you, but make sure you follow the appropriate steps so that your agreements are legally binding.
