Intellectual Property Management

The filing of patent applications is usually an essential part of the commercialisation process, without which it is difficult to obtain full value from a discovery. In principle, almost anything which is novel, inventive and useful can be patented, but we have most in-house experience of obtaining protection for novel drugs, and these are generally the easiest to defend.

It is vital to structure patents such that they cover sufficient chemical or biological space as to prevent others from capitalising on a very similar product, but not so broad as to risk challenge or rejection by a patent examiner, or to sabotage future applications which would build upon the discovery. Once a patent has been filed, there is usually a year during which one has the opportunity to add further material. It is essential to use this year wisely and produce valuable data for the "final" version of the application. Thus it is important to consider when to file and to ensure that sufficient resources are in place to perform the required studies. Once the application has been filed, then the process does not end, further issues include responses to examiner's reports, deciding in which countries you wish to obtain protection, and of course exploiting the patent whilst it still has value.

We have had a very successful relationship with Mewburn Ellis for over 10 years and are well placed to give advice on the various challenges and opportunities encountered at each stage of the process

Contacts:

Dr Iain Greig (i.greig@abdn.ac.uk) and Dr Ann Lewendon (a.lewendon@abdn.ac.uk)