RE: Berm2 Jul 2023 22:56
Berm,
Due to the changes that were made, now the globe is on a first to file system. Meaning what is written in that patent when granted, is what is covered in IP law.
Historically, in the US (and Canada and the Philippines) if you could prove that you had made the same discovery before another party, even if they had made it to the patent office & filed first, there was a window when you could effectively submit a counter claim for that IP. In pharmas, this was important because two parties could discover the same drug molecule independently for the same target. Party A may have continued to do some further research on it to understand more about the molecule & delayed patenting it (therefore extending the life of the useable part of the patent if it got through clinical trials), whilst Party B may have gone for a patent early to go for protection, even if they then had to do some further R&D to understand more about the molecule.
Using this example with a standard 20 year patent life.
Y0 - Party A discovers drug
Y5 - Continues to work on this molecule and then patents it
Y15 – Drug is approved
Y25 – Drug comes off patent (10 years of sales)
Y0 – Party B discovers drug and patents it
Y5 – Continues to work on this molecule
Y15 – Drug is approved
Y20 – Drug comes off patent (5 years of sales)
If Party A could prove that they discovered & had been working on the molecule before Party B did, then they could argue that Party B’s patent was invalid and that they should be granted the patent. In terms of sales using the above example, Party A would benefit from not patenting until it had done further research as this would lead to a longer sales before going off patent. In a first to discover world, this is beneficial. In a first to file, this is not because you may miss the opportunity to patent.
It all got very complicated because how do you prove when you did something (it is easier with tracked data logged electronic lab books etc but not everyone uses these). This all changed when the US and the rest of the first to discover, moved to the first to file system.
Now parties file a patent which is as broad/far reaching as possible. If granted – good. You then tie up loose ends, or continue to work on the areas that you have less data on without fear of someone else stealing your IP If not, then you drop the claims which you have less data on & still have something patented. Previously, you would have just continued to work on strengthening those claims because you weren’t rushed to get the IP covered.
You are correct in the fact that PTMs which were deleted do not form part of Scancell's IP. However, there is nothing stopping them doing the research on that, strengthening the data behind those and reapplying. However, now because we’re all on a first to file system, if someone else (Party C) is doing that research in the background and gets there first, tough. Party C would get the pa