Patent - intectica

Intectica is one of the leading IP companies developing and implementing patent strategies in chemistry-related fields (agriculture, medicine, cosmetics, food industry). Since our team is formed from leading experts of the Ukrainian Patent Office Chemistry and Medicine Department, we are able to successfully support and protect our clients in the national and international market entry.

Why do you need a patent for the market entry? Patent protection is a powerful tool that provides exclusive rights to you to prevent competitors from using your product/technology without permission.

To obtain effective patent protection a careful planning and strategy are required.

First, we throughoutfully analyze your product/technology to understand its strong and weak sides. This approach is similar to the work of a doctor, because your representative should know all the problems, features and wishes to maximize the potential of your invention and create the patent strategy that suits you and your needs.

Second, we try to predict the actions of your competitors and any monopoly breaches (infringements) that could arise in the future. For this we conduct patent searches and, using our legal knowledge, investigate registration possibilities for the majority countries of the world: Ukraine, CIS, EU, Asian countries, USA and so on. Our professionals use only official national and international patent databases – Patentscope (157 Contracting PCT States and more than 30 countries with documents published in full-text format), EAPATIS (8 Contracting States, more than 20 search countries) and espacenet (39 Contracting States, more than 140 million published documents).

Process of the strategy creation is an art. Our goal is to understand your wishes and to implement them into the patent. For that we need to understand why you need patent protection.

Our experience shows that there are several main directions:

1) Launch of a completely new product.

Goal: To provide you with a monopoly on the market.

Our actions: We conduct international patent search accordingly to the European Patent Office standarts and provide search report with the conclusion about patentability of the invention. Based on search results we draft a patent application, usually a series.

Comment: This is a rare example of the classical patent registration, “true” or “real” invention.

2) Launch of the new product when there are analogues on the market.

Goal: To ensure safe market entry.

Our actions: We conduct national Freedom-to-operate search and prepare report regarding possible patent right infringements. If there is no overlapping monopoly, we always recommend to do a patentability search and analysis and file your own patent application.

Comment: This is the most common case where we already have risk-based mechanisms at action.

3) Development of the new product.

Goal: To create a new product and to secure the monopoly for it.

Our actions: After receiving Terms of reference our science team carries out a comprehensive analysis of your idea and makes a conclusion about possibilities of the implementation. If the world-wide landscape search shows any problems on the way of your invention, we suggest ways to solve it. After agreeing on the details of the project we draft patent applications and registration documents for the market entry.

Comment: Intectica already has reliable algorithms of actions that can be adapted to your specific needs. The knowledge is based on our practice with having in mind possible risks.

4) Startup launch.

Goal: To protect safe capital investments and obtain monopoly on the market.

Startups can be completely different, but all of them have an intellectual component – new or developed old idea, which is an intellectual capital of the company.
For startups there are several stages of the IP protection. First – company development and search of investors. On this stage main startup elements need to be protected, and also with minimal costs. This period is very responsible, as it provides the base for the future actions. If we talk about technological invention, for example, new drug or device, first patent application conditions success of the whole project.

Startups are a highly competitive area, so you are encouraged to file a patent application as soon as you can, but you need to be sure to consult a reliable patent attorney who has proven his competence in this field.

Your monopoly is disclosed in the patent in a limited set of words, so, these words should reflect perfectly on the essence of your invention, each sentence should be carefully constructed and well-judged. We need to claim the invention the broadest way to include all the variants, at the same time without any risk of infringement rights of the owners of the existing patents, with the possibility of the further development and establishment of your idea in the next 12 months. And of course, the application should fulfil all requirements for the patent grant. You can see that the task is complicated and asks for a professional, who is capable to fully understand your invention in the light of the IP practice.

Therefore, consult with us on the stage of the startup creation, be open about possible weaknesses, so we could diminish them with our tools and experience.

We often analyze patents owned by startups for our clients who want to invest in the project. If the application was written without thought, i.e, does not provide necessary monopoly, this can result in the appearance of the competitive patents, up to complete closure of the field. The worst-case scenario is that the examined patent does not protect the existing product, and we are not able to file new “correct” application, as it was already covered by the competitor. Of course, we do not recommend to invest in such a situation.

In the company practice there are situations when you need to protect a startup that you already bought. For example, we had to protect unique “Indian Viagra”, which was already bought from the Indian startup. Our search department conducted a patent search and revealed, that the product was indeed developed by Indians, but by completely different company, and 4 years ago. The initial inventors had their own patent with the drug described in full detail, so, eventually, our specialists didn’t have any opportunity to help with that case.

So, if you consider investing in the startup, do not hesitate to consult with our specialists before the purchase.

In addition to the technical essence of the startup, an important component is its “appearance” – the name, logo, slogan – which also needs to be protected. To do this, we offer trademark registration (TM). The first step in registration is to search for similar TMs on your project territory.

At first glance, there is nothing complicated in obtaining a TM and many lawyers register them. However, you need to be careful and prepare the ground for registration by searching for TMs. A startup is an investment project, and trademarks are usually registered within two years. Thus, without search, your trademark may not be registered or you will receive a certificate, but there will be competitors with the same TMs and you will not be able to do anything.

The next step is to develop a protection strategy through TM. There are many types of TMs, and the task of choosing the best option (or several options) for you is worth leaving to competent professionals. For example, it may not be necessary to register a word because it is doomed, on the contrary, it may be worth registering only a part of a word or phrase, sometimes it is necessary to add a graphic symbol, sometimes not.

Thus, for IP protection of your startup, you can choose any option – from the most basic to advanced registration package. Even at the very beginning of the startup’s existence, there is an opportunity to include a brand protection strategy (in particular, territorial) in the project business plan for investors, having implemented and chosen the main – basic protection option. This basic option should be minimal, but sufficient.

Comment: Intectica has experience in developing any level of protection that will allow you to confidently disclose your idea without the possibility of plagiarism.

Patent protection is obtained via an invention patent or a utility model patent. The invention patent provides 20-year patent protection (for medicines for a maximum of 25 years), and the utility model patent – 10-year protection.

There is a common algorithm for obtaining the patent. The first step in this algorithm is to draft and file a patent / utility model application.

Regardless of the country and patent type, the patent application has a common form, namely it consists of an abstract, description, claims and, if necessary, drawings. Moreover, the scope of the rights is determined only by the patent claims, and the description contains the necessary, but purely accompanying information. Therefore, the main task when filing the patent application is to carefully formulate the clauses of the claims that will provide the broadest patent protection.

In addition, the patent object, which is described in the application claims, must be protected, i.e. meet the conditions of patentability – novelty, inventive step (not necessarily, depends on the patent type) and industrial applicability.

From the moment of filing, the patent application goes through certain stages of the registration procedure. Stages vary depending on the country, type of application (national, international, European, etc.) and patent (invention or utility model), but generally include conducting a patent search, conducting one or more patent examinations (formal and / or substantial), publishing application materials, etc. The registration process can result in the successful grant of a patent or the withdrawal of a patent application for a number of reasons. After the grant of the patent, it is necessary to pay an official fee for maintaining the validity of the patent annually for a certain period of time.

To successfully register the patent, correct drafting of the patent application is not enough, it is also necessary to successfully pass all registration stages, which include timely submission of necessary and properly executed documents to the Patent Office, use of certain regulated forms in correspondence with the Patent Office, timely payment of patent fees, etc.

In addition, one of the most critical stages of the registration procedure is the patent examinations. Depending on the patent type, the registration procedure may include only a formal examination, or both a formal and substantial examination. As a result of each examination, you can immediately receive a positive decision (i.e. the application meets all the requirements and can proceed to the next registration stage) or you can receive an Office Action.

If you received the Office Action, it means that the expert analyzed your application and concluded that it does not meet the formal requirements or patentability requirements. In this situation, there are two options: accept the expert’s comments and, if possible, correct the application materials, or provide a reasoned answer as to why you reject the expert’s comments.

Our specialists have experience in granting patents around the world, can consult with experts of the patent examination, so we are ready to assist you in providing a successful response to the examination request, while maintaining the maximum amount of rights, without limiting the patent application claims.

When developing patent protection, we try to avoid the possibility of receiving the Office Action. For complex or controversial objects of patenting, we try to anticipate possible comments of the expert and prepare an appropriate answer that will satisfy the examination.

Our qualified specialists track all deadlines and provide information: official notifications (translation and comments if necessary), notifications on the application status, information about the necessary further actions, costs, etc.

Patent search is a search in publicly available sources of patent and non-patent information (national patent databases, international patent databases, academic work databases, research work databases, etc.).

What gives you the patent search?

The patent search makes it possible to identify similar products / technologies, even if they are present on the market yet, and you do not know about them, to identify your competitors, and to build up the patent protection strategy that suits your product / technology.

The patent search can be performed before filing a patent application, at all stages of the patent registration, as well as after the patent is granted. Depending on the purpose, there are several main types of the patent searches; each of them is a step in the developed strategy of the patent protection or entering the market.

Intectica offers the following types of the patent searches:

1) Patentability Search. Conducted worldwide. Allows assessing whether your product / technology is new and whether your product / technology has an inventive step. Based on the search results, we assess whether it is possible to obtain the patent protection at all and in which countries, and recommend the type of the patent appropriate to your situation – for an invention or utility model.

2) Freedom-to-Operate Search. Conducted in each individual country. Allows assessing whether there is a product / technology similar to yours in a particular country, and whether your patent will infringe the rights of patent holders to a similar product / technology. Based on the search results, we recommend the patenting object relevant to your situation, outline the features that will distinguish it from similar objects, and predict the risks of the patent registration denial, the risks of opposition, etc.

We recommend conducting the Patentability Search and Freedom-to-Operate Search before filing the patent application and selecting countries for the patent protection. The Patentability Search and Freedom-to-Operate Search is an important strategic step to obtain a “strong” patent and protect the product / technology. They allow assessing the global and regional situation and determine the chances of the success. Further protection strategy is built in accordance with the found patent and non-patent documents. Professional analysis of the situation, based on our global patent practice, allows us to find the most appropriate solution particularly for you.

3) Opposition Search. Conducted mainly in the country of your interest. Allows developing an argument that will not allow the grant of a competitor’s patent or revokes the effect of a competitor’s patent that prevents the patenting or market entry of your own product / technology. Based on the search results, we conclude on the possibility of opposition and prepare a corresponding objection to the patent grant or patent validity.

The patent search is based on information obtained from you. We have prepared a special form of the Functional Specification, which contains all the questions necessary to conduct the patent search. Since the patent search can be performed for different objects (substance, composition, method, device, etc.), to achieve the highest search efficiency, we have prepared separate forms, taking into account the characteristics of these objects.

Below you can get acquainted with the proposed objects of the patent search and download the appropriate form of the Functional Specification for the patent search.

We provide the patent search results in the form of a search report together with the relevant patent and non-patent documents found during the search.

The purpose of filing a patent application is to obtain an invention or utility model patent that will be valid in the country / region you are interested in and provide patent protection in accordance with national law. Moreover, the most important part of the application is the claims, which consists of independent (general) and dependent (specific) claims and determines the scope of the patent protection. Drafting the patent application and, in particular, the claims, is perhaps the most important step for the following reasons:

1) The object described in the patent application must correspond to the product / technology that will enter the market. If the characteristics of the application subject matter differ from the characteristics of your final product / technology, it can be assumed that the received patent will not protect this product / technology. To avoid such a situation, fruitful cooperation and understanding between you and the Intectica team, detailed analysis of all the features of the product / technology, as well as your goals, etc. is needed.

2) The object described in the patent application must prevent the launch of new competing products on the market. You, as the patent owner, have the exclusive right to prevent competitors from using, producing, offering for sale, selling and importing products / technologies similar to the products / technologies patented by you. Since the scope of rights depends on the scope of the patent claims, the claims must be formulated so as to avoid excessive narrowing of the scope of rights and give you the widest monopoly. To achieve this, in the patent claims, we not only list the specific features of your product / technology as they are at the moment, but also try to formulate them in more general way and anticipate all changes that may be made to the product / technology by competitors to “bypass” your patent.

3) The description of the object must meet the requirements of the relevant national or regional legislation. Depending on the country, patent law differs in: objects that can be protected at all; objects that can be protected as inventions / utility models; patentability requirements of inventions / utility models; requirements for the claims, description, structure of abstracts and drawings; requirements for the formulation of technical problems and technical results; etc. Approaches to conducting the patent search and examination of the patent application may also differ.

Why is it necessary to comply with the requirements of national / regional legislation when filing the patent application?

To save your time and money.

As our practice shows, filing the patent application without complying with the requirements of national patent law leads to additional problems at the examination stage and often fails. Most often, this situation arises when filing a single patent application in several different countries, or at the beginning of national phases for a single international application, when applicants want to reduce the cost of adapting the application to the legislation of each country.

In such cases, there is only one way to increase the chances of registering the patent – to make appropriate changes to the national application for each country. Changes can be made before the application is submitted (during the application adaptation process) or at the application examination stage (during the preparation of the response to the examination request – Office Action).

The Office Action is a kind of list of comments on the application, which is sent from the relevant Patent Office, if the application does not meet the requirements of the law. As a rule, preparing a response to the Office Action requires a large investment of our time and your money, which depends on the complexity of the request, and this can slow down the patent registration process. Depending on the situation, one answer to the Office Action may not be enough, and therefore, the second, third Office Action, etc. may follow, which prolongs the registration procedure and increases the financial costs.

Therefore, our strategy for filing the patent application is aimed at reducing the chances of receiving the Office Action or increasing the chances of accepting our first response to the Office Action. In particular, the work includes analysis of the request (if necessary, translation), targeted analysis of the legislation of the country based on the received request, analysis of the application materials based on the results of the legislation analysis, and preparation of the response to the Office Action.

Thus, our strategy of drawing the patent application is aimed at ensuring the widest possible monopoly, the maximum specification of the object so that it corresponds to your final product / technology, but at the same time the maximum generalization of the object to prevent competitors, as well as adaption of the application to national requirements before submitting the application, avoiding expert requests and facilitating the examination of the application.

There are different ways of filing a patent application: (i) filing a patent application under a national procedure, (ii) filing a patent application under an international procedure, and (iii) filing a patent application under a regional procedure. The choice of a particular method depends on your goals and objectives.

Filing the application according to the national procedure

Every natural or legal person has the opportunity to apply for a patent in any country of interest where patenting is possible at all.

Depending on the country, you have the opportunity to register different types of the patents and different objects. Also, depending on the country and the patent type, there are different protection conditions that your object must meet and how compliance with these requirements is assessed by the patent experts.

THE MAIN thing to consider when filing the patent application under the national procedure – the patent is valid only in the country of the registration!!!

If possessing a patent in one country is not enough, you have 12 months (from the date of filing the patent application) to decide on filing the patent applications in other countries / regions on the basis of a previously filed application. In this case, it is possible to choose any option: (i) to file the following patent applications again under the national procedure, (ii) to file one international application followed by the filing of national applications, or (iii) to file an application(s) under the regional procedure (for a European patent and / or Eurasian patent).

Filing the application according to the international procedure

Filing an international application involves filing a single international application (PCT application), on the basis of which national applications can be submitted in any of the more than 150 countries of the Paris Convention for a certain period of time (30-31 months from the date of the priority application fiing).

An international application may be filed as a separate application or on the basis of previously filed one or more patent applications (priority applications).

What does the international application filing provide?

You claim your rights to the object and at the same time get extra time to make a number of important decisions on the list of the countries in which you want to obtain the patent, calculating the cost of patenting, finding authorized representatives, drafting the necessary documents for filing the national applications, adjusting national applications according to local legislation, as well as to finalize the application (for example, finalize technical features of the object, obtain research results, formulate technical results, etc.).

Intectica practices the drafting of the international applications in such a way as to claim the widest possible range of rights, and the application itself can combine all the information from previous priority applications. The widest range of rights is ensued by using the widest possible independent claims, i.e., large ranges of values for the formulation or composition, specific structural formulas are replaced by Marcusch structural formulas, a large number of independent claims for different objects (e.g., simultaneously on the compound, the pharmaceutical composition, the method of obtaining the compound, the method of obtaining the pharmaceutical composition, the use of the compound, the use of the composition, the method of treatment with the composition, etc.).

After submitting the international application, the International Searching Authority conducts an international search, the results of which send you as a report. Based on the results of the report and targeted analysis of the national legislation features, we make the necessary adjustments to each national application. Our approach avoids unnecessarily restricting your rights and maximizing them for each selected country.

Advantages of submitting the international application:

1) Submission of only one application in one of the ten accepted languages (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish), which greatly facilitates the international application process.

2) Extended term for further submission of national applications – 30-31 months from the date of the priority application filing.

3) Mandatory international patent search, the results of which provide a conclusion on the novelty, inventive step and industrial applicability of the object of the international application. The results of the patent search allow us to predict how the national application will be accepted at the national phase in a particular country. Moreover, as our practice shows, many countries do not conduct a separate patent search during the examination of the patent application, but use the international search report. Thus, the good international search report gives the experts a positive impression of the application and significantly increases the chances of success and patent grant.

4) The possibility of filing the national application in the form of not only a patent application for an invention, but also a patent application for a utility model (which mainly depends on the specific country).

5) A wide range of countries belonging to the Paris Convention – more than 150 countries support the PCT system; and the list continues to grow.

Filing the application according to the regional procedure (Europe)

A European patent is a patent that can be valid in about 38 countries that are parties to the European Patent Convention. Moreover, the European patent is automatically valid only in Germany, Belgium, France, Liechtenstein, Luxembourg, Monaco, Switzerland, Ireland and the United Kingdom. In order for a European patent to take effect in other countries of the European Patent Convention, a validation procedure must be carried out.

What does applying for a European patent provide?

Significant simplification of the procedure for obtaining a patent, which will be valid in a large number of EU countries.

The European patent is a patent for an invention and must meet all the patentability requirements: novelty, inventive step and industrial applicability.

An application for the European patent may be filed in English, German or French as a separate application or on the basis of previously filed one or more patent applications (priority applications). A qualified patent search is conducted for the application, the results of which are analyzed and used by an expert to make a final decision on the grant of the European patent.

The European patent is perhaps the most controversial approach to obtaining patent protection, because in addition to the obvious significant advantages, it has major disadvantages.

Advantages of filing the European patent application:

1) Submission of only one application in one of the three accepted languages (English, German, French), which greatly facilitates the application process.

2) Submission is possible only by an authorized representative who conducts his activities in the country of the European Union. Intectica has its own office in one of the EU countries – Bulgaria, and its patent attorney.

3) Carrying out only one patent examination. If the patent examination concluded that the application meets the patentability requirements, this decision is valid for all countries of the European Patent Convention.

4) Obtaining only one European patent grants patent rights simultaneously in a large number of EU countries.

5) Obtaining the European patent can have a significant positive effect on the decision to register a patent for the same object in other countries that do not belong to the European Patent Convention.

6) The European Patent Convention continues to expand the list of contracting states.

Disadvantages of filing the European patent application:

1) The need for a rather expensive procedure for the validation of the European patent, as the European patent is automatically valid only in Germany, Belgium, France, Liechtenstein, Luxembourg, Monaco, Switzerland, Ireland and the United Kingdom.

2) The need to submit a fully prepared application with the obligatory indication in the description of the application of reliable research results, technical results, etc. Insufficient background information may lead to changes in the claims and a narrowing of the scope of the patent rights.

Therefore, before applying, it is extremely important to assess the chances of obtaining the European patent. If your invention meets all the patentability requirements, it is advisable to apply for the European patent. If there is doubt about the patentability of the invention (usually there are difficulties with the inventive step), it is necessary to analyze different options for obtaining protection in Europe, such as strengthening the European application or an alternative national application in a particular country(s).

Filing the application according to the regional procedure (Eurasia)

A Eurasian patent is a patent that can be valid in all countries of the Eurasian Patent Convention (Republic of Belarus, Turkmenistan, the Republic of Tajikistan, the Russian Federation, the Republic of Kazakhstan, the Republic of Azerbaijan, the Kyrgyz Republic, and the Republic of Armenia). At the same time, it is possible to maintain the validity of the Eurasian patent not in all these countries, but only in the countries of your interest.

What does applying for the Eurasian patent provide?

Significant simplification of the procedure for obtaining a patent, which will be valid in eight countries of Eurasia region.

The Eurasian patent is a patent for an invention and must meet all the patentability requirements: novelty, inventive step and industrial applicability.

An application for the Eurasian patent may be filed in English or Russian as a separate application or on the basis of previously filed one or more patent applications (priority applications).

Advantages of applying for the Eurasian patent:

1) Submission of only one application in Russian or English, which greatly simplifies the submission process.

2) Conducting only one patent examination. If the patent examination concluded that the application meets the patentability requirement, this decision is valid for all countries of the Eurasian Patent Convention.

3) Obtaining only one patent grants patent rights simultaneously in several Eurasian countries.

4) Obtaining the Eurasian patent can significantly affect the decision to register a patent for the same object in other countries that do not belong to the Eurasian Patent Convention.

5) The Eurasian Patent Office offers discounts on official fees for various categories of applicants.

However, due to the small number of countries of the Eurasian Patent Convention, national applications for inventions / utility models are required to cover the rest of the region.

Before filing a patent application, a patent search is conducted and the chances of the successful patent protection of your product / technology are assessed.

Often the results of the patent search show that similar products / technologies already exist in the world or country of your interest. In this case, your product / technology does not meet one or more patentability requirements, i.e. it is not new, or does not have an inventive step, or is not new and does not have the inventive step at the same time. And this does not allow it to be patented. Therefore, after the patent search, you need to conduct patent research and finalize the patent application for your product / technology so that it meets all the necessary patentability requirements.

What do the patent research provide?

The patent research makes it possible to turn your product / technology, which cannot be patented as it is, into a product / technology that meets all the patentability requirements and can be patented.

If the results of a patent search show the presence of similar products / technologies in the world or country of your interest, our specialists will conduct patent research, the results of which will prescribe the features of your product / technology that will distinguish it from existing ones. That is, they will eliminate the weaknesses of the patent application for your product / technology as much as possible and make it patentable.

Each case is purely individual and requires a separate approach, but there are some common cases where our team needs to conduct the patent research to ensure the successful patenting of your product / technology.

1) The object is new and has an inventive step – this is the best situation, which happens very rarely. The task is to obtain the maximum amount of rights for the maximum period of time. In order to achieve this, we propose to register invention patents. And to ensure the maximum amount of rights, we offer a number of techniques, such as filing separate patent applications, listing numerous technical results, formulating several independent claims and broad independent claims, and providing various embodiments and examples, etc.

2) The object is new, but does not have an inventive step – this is the most common situation, especially in the field of pharmaceuticals, which is very attractive for manufacturers of generic drugs. To ensure the inventive step and obtain an invention patent, it is necessary to change the characteristics of your object to be patented. In this case, our specialists will be happy to work with your technical experts to ensure an inventive step.

Otherwise, we offer to obtain a utility model patent that does not require compliance with the inventive step requirement.

3) The object is not new and does not have an inventive step – the most difficult situation. The patent protection can only be obtained through a utility model patent (if at all possible). To ensure the novelty requirement and to obtain a utility model patent, it is necessary to change the characteristics of your object to be patented. In this case, our specialists will be happy to work with your technical experts to ensure novelty.

4) Looking for new opportunities – do you want to develop a new product / technology or modify existing ones? We are happy to help with our experienced technical experts in the field of chemistry and established contacts with scientists in the United States, Australia, Canada, Ukraine and Bulgaria.