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iGEM Guide to Intellectual Property

Introduction

The iGEM competition is heavily dependent on the development of new ideas and use of already patented ones. For this reason, the 2012 UBC team has decided to create a cohesive resource to answer questions pertinent to the iGEM community. We hope that this FAQ page will serve as a good starting point for people trying to understand intellectual property laws and will guide you in determining what direction is right for your project. The content of this page has been tailored to address issues most relevant to iGEM, which were determined after surveying multiple teams.

The main focus of this FAQ page will be on patents, as they are the most common type of intellectual property that iGEM teams deal with. We have tried to present the information in a country-neutral manner, but keep in mind that patent laws vary from region to region. The content here are often generalizations that will give you an idea of how intellectual property works.

What is intellectual property?

What are copyrights?

What are patents?

How are patents used?

Does my university own my idea?

As a person affiliated with my university, does the institution have any claim over ownership of inventions resulting from my side projects separate from what I do at the university?

Does the university still own my invention if it turns the idea down for patenting?

How much does a patent cost?

How long does it take to get a patent?

What regions is my patent effective in?

How much information about my idea can I disclose before I get a patent?

Who should I talk to if I want to determine the patentability of my idea?

What is intellectual property?

Intellectual property (IP), according to the Canadian Intellectual Property Office, are "legal rights that result from intellectual activity in the industrial, scientific, literary, and artistic fields" [http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00011.html ¹]. This can come in the forms such as patents, copyrights, trademarks, and trade secrets. These allow you to protect your invention or idea.

What are copyrights?

Copyrights give creators of original, dramatic, artistic, musical, and literary works exclusive rights to use them [http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00003.html?OpenDocument ²]. These are applicable to computer programs.

What are patents?

Patents are the "right[s], granted by government, to exclude others from making, using, or selling your invention" [http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00001.html ³]. An invention is, according to the World Intellectual Property Organization, "a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem" [http://www.wipo.int/patentscope/en/patents_faq.html#patent ⁴]. To qualify for a patent, the idea must fulfill certain criteria:

• Utility: The invention must do what you claim it to do
• Novelty: The idea must be unique and not previously mentioned in any literature
• Non-obviousness: The invention must not be of something that can easily be thought up by non-experts
• Material Patentability: The subject matter must be considered patentable by the government issuing the patent

How are patents used?

Patents basically give you sole ownership over your idea. Once you are granted a patent, you get exclusive rights to dictate how, where, and when your invention is used for as long as the patent is valid. Here are some typical ways patents are used:

• Revenue: Making a profit from your invention is one of the most common reasons for seeking a patent. Patent holders can sell or license out their inventions. Revenue generation may often involve demanding a royalty from users of your idea.

• Access: Some inventors use their patents to assert control over how their patents are used and who accesses them. They may only permit their inventions to be used for certain research or grant user rights to certain organizations or people under pre-determined terms. This control allowed by patents can exclude competition from research or markets.

What should I consider before I whether or not I should apply for a patent?

There are many things to consider, and they may be different for each case. Some main points to think about, however, are:

• Cost: Do you have enough money for the initial investment of applying for the patent? Are the costs of getting and enforcing a patent worth the return it is projected to give?
• Purpose: For what purpose are you getting your patent? Is the patent necessary for the vision you have for your invention? If so, is the cost worth the fulfillment of this vision?
• Time: Is the potentially long time that it takes to get a patent going to affect the end goal I wish to achieve with my invention/patent? For how long would my monopoly over the invention be useful to me?

Taking to your institution's UILO or TTO is recommended, as they will help you in these assessments.

Does my university own my idea?

Institutions usually adopt one of two typical types of policies:

1. The institution owns all inventions done in its facilities or produced by its employees (i.e., faculty members and graduate students).

2. The inventor associated with the institution, but not the institution, owns the invention.

Universities in the United States tend to adopt the first type of policy, while Canadian institutions are more varied.

Depending on your university, ideas resulting from undergraduate student work may or may not be subjected to university ownership. Generally, producing inventions are regarded as part of the job description of faculty members and graduate students. On the other hand, institutions often feel that undergraduate students work for the purpose of learning and that any invention resulting from this is the property of the student.

As a person affiliated with my university, does the institution have any claim over ownership of inventions resulting from my side projects separate from what I do at the university?

The institution will evaluate the claim on ownership of such ideas on a case-by-case basis. Usually, if the invention is well outside of the area of focus the inventor is employed to work in, then the university will not be considered an owner. However, boundaries delineating what is or is not outside this area of focus can be debatable and may be subjected to investigation by the university before any conclusion can be made.

Does the university still own my invention if it turns the idea down for patenting?

Sometimes the work you do at the university produces a patentable idea, but the institution may refuse to invest in patenting it. This may be the result of financial considerations or a divergence of principles. Either way, once the idea has been turned down, the university relinquishes its ownership claim.

How much does a patent cost?

Patent cost can vary case to case. Some influencing factors are country issuing the patent and nature of invention. Some cases may also encounter legal complications, which can slow down and raise the cost of your patent.

The coverage you desire your patent to have, as well, will affect how much money you need to invest. For example, if you want ownership over your idea in more than one country, then you will need to apply and pay for patents in each of them.

For patents in the United States of America, it generally costs $30,000 or more for a standard application. Obtaining legal ownership of your invention, as you see, is costly. Thus, you should assess whether your initial investment is worth it in the context of your plans for the invention.

To get a better idea of the financial implications and commitments of your specific patentable idea, we recommend that you discuss it with someone from your UILO/TTO.

How long does it take to get a patent?

Again, the length of time it takes to get your patent approved depends much on your specific case. If the patent examiner and the applicant continue to disagree on the terms of the patent, then the process can be dragged out and delayed. The typical patent takes around 3 to 6 years to obtain.

What regions is my patent effective in?

Your patent is only effective in the legal jurisdiction to which you submitted your application. If you wish to own the invention in other countries, you must simultaneously apply for patents in those respective countries in which you want control of your idea.

One route you can take, if you intend on going international, is to take advantage of the [http://www.wipo.int/pct/en/texts/articles/atoc.htm Patent Cooperation Treaty (PCT)] and apply to the [http://www.wipo.int/portal/index.html.en World Intellectual Property Organization (WIPO)]. Doing so will allow you to reserve your ownership claim in the 146 countries that have signed onto the PCT [http://www.wipo.int/pct/en ⁵]. You will get 30 to 31 months to decide which countries of the PCT you wish to get patents in.

If you decide to get patents in other jurisdictions after you have filed the application in your original country, there may still be able to get them. Some countries give inventors grace periods, during which the patent offices will still accept applications even if they are not submitted at the same time as when your original one. This will allow you some time to consider whether or not you want to enter into these countries.

How much information can I disclose about my idea before I get a patent?

The less about your invention that you make public, the better chances you have of claiming ownership. However, your yet to be patented idea can still be eligible for patenting if key information is withheld. As long as you do not give away the crucial pieces of information for other people to replicated your idea, you are probably safe. For example, you can claim that you have found a compound, nicknamed "WonderDrug," that can cure all types of cancer. However, if you disclose the real chemical name of the compound or any other key information that may inform others of its actual identity, then it is considered public knowledge and you can no longer own it exclusively.

If I have already disclosed my idea before I applied for a patent, is there anything I can still do to claim ownership over it?

Generally, it is not a good idea to disclose information about your idea before you have submitted a provisional application. There is not guarantee that you can still claim ownership over the invention without doing so. However, depending on the how much is actually disclosed, you may still be able to retain your rights to claim.

For select countries, you may get a grace period. This grace period allows you a limited time to submit your provisional patent application.

What happens if I need to make my idea public before my project is ready for patenting?

You can submit a provisional patent application first. A provisional patent application allows you to reserve claim over your invention for a certain amount of time before you must submit the actual patent application. In addition, you may wish to draw up a provisional application if you desire some time to consider whether or not you want to go through with the patenting process before you commit.

Who should I talk to if I want to determine the patentability of my idea?

Universities usually have their own Technology Transfer Office (TTO) or University-Industry Liason Office (UILO). They handle intellectual property owned by the institution and assist university groups in protecting their ideas. If your learning institution has such an office, it would be the best starting point for you. They will guide you through the patenting process step by step from there and can provide you with any consultation you may need. In addition, they are also able to put you in contact with professionals, such as patent lawyers, whose expertise you may need.

Are Biobricks or other DNA sequences patentable?

The ownership of genetic material is currently under much debate. Several landmark cases have recently been ruled and have changed the legal stage for the life sciences. However, the line delineating what is or is not patent material is still not universally defined. In general, it appears that a DNA sequence itself cannot be owned. However, specific functions and uses for these sequences are frequently qualified for patenting.

As for BioBricks, your team should have signed two agreements. One is the User Agreement and the other is the [http://biobricks.org/wp-content/themes/bbf/bpa-sample.php Contributor Agreement]. The former requires users to credit contributors, while the latter states that contributors will release their power to legally enforce ownership over inventions when others utilize their BioBricks.

When should I approach my patent professionals about patenting my invention?

Although it is never a good idea to start the patent process a few days before you need to publicize your invention, you still need to have enough of your project worked out before you can do anything legally. It is advised to approach professionals once you reach the point where you are only working out a few minor details or collecting the last little bit of data. This is because the patent application will require you to outline the specific details surrounding your idea.

What do I need to do if my project, which I do not plan to patent, uses a patented product?

An important aspect of any project is to ensure that it does not infringe on any patents. It is your team's responsibility to do so. Many reagents are actually patented, but allow for research use. This may, however, may cause a problem is you use this product in the process of making the invention you intend to patent (see below). For other components of your project that is owned by someone, you will need to contact the owner and legally get permission to use them. Obtaining permission can entail various things, such as monetary compensation to the owner or acknowledgements. Once you and the patent holder has reached an agreement on the terms of use, then you will be able to legally utilize their invention.

What do I need to do if my invention incorporates patented components?

Any part of your idea that involves the use of already patented material must be dealt with, lest you face legal repercussions. You will need to reach some sort of legal agreement on the terms of use of the patents with each of their respective patent holders. Many inventors will require you to pay them money for the rights to use their invention, depending on the nature of your patentable idea. It is only once you have obtained permission for all of them that you can obtain a patent for your own invention. If you cannot get the right to use any one part, then you may be sued for infringement.

Acknowledgements

This guide is a product of the cooperation between the 2012 UBC iGEM team and ....