Importance of Patent Search for Regenerative Medicine Inventions

blank blank Oct 30, 2022

Researchers developing innovative technologies in biotechnology, such as neuromodulation, bioprinting, and tissue engineering, and in the life sciences, such as new drug development and regenerative medicine which encompasses therapies that repair, replace, or regenerate organs, tissues, cells, and genes, often find themselves questioning whether their innovations, besides making a difference in people’s lives, are worthy of patent protection.  This is because patent protection can provide value to the company funding the research by preventing others from practicing the developed technology and creating business opportunities, such as licensing or selling the patented technology and receiving research grants.  To determine if a technology should be the subject of a non-provisional (also referred to as a utility patent application), the researcher or company will be best served to engage a patent agent or attorney who will likely advise performing a patent search.  Even though a patent search is optional, this article provides four reasons why it is important to perform a patent search.

1. Time and Cost Savings

The patent search is much more inexpensive than preparing and filing a non-provisional patent application and prosecuting the same in the US Patent and Trademark Office (USPTO) and if desired, in foreign patent offices. A patent search can reveal references, such as medical journals and patent publications, that disclose the technology or render it obvious.  Therefore, it is better to find out from a patent agent or attorney that the patent search revealed one or more references describing similar or identical inventions, than learning this from a USPTO examiner months or years after having spent time and money on research and the prosecution of a patent application (and related patent applications) directed to a technology that is not novel, or that marketable claims cannot be secured.

2. Gauge the Scope of the Patent Claims

The patent search results enable a patent agent or attorney to gauge how broad the inventor’s patent claims, which define the scope of protection for the invention, can be drafted.  Without having any guidance based on prior references identified during the patent search, broad claims may be drafted and filed which will be found to be anticipated and/or obvious by the patent examiner based on references that could have been easily identified during a patent search.  Moreover, without the guidance provided by conducting a patent search, narrow claims may be drafted and filed which could have been broader in scope.

It is evident that a patent search provides the barometer on the scope of the claims that can be potentially secured and helps answer the question of whether that scope is desirable to the research institution, company, or inventor. 

That is, a decision can be made not to proceed with preparing and filing a patent application if the patent search and analysis show that very narrow claims can be secured which can easily be designed around by others. 

For the same reason, narrow claims will also not appeal to potential investors and licensees, f they are granted. Therefore, if it is determined that broad or intermediate claims scope is not likely to be obtained based on the patent search results, the researcher or company funding the research may decide to forego the preparation and filing of a patent application and think of investing resources in another technology where such claims are more possible.

3. Redesigning or Pivoting the Research

The information gleaned from a patent attorney’s analysis of the patent search results can provide guidance for improving or redesigning the invention or research approach. If at least one patent is identified during the patent search that describes a similar or identical technology, the inventor can improve or redesign the technology being developed in a manner that is novel and nonobvious over the identified references. That is, the improvement or redesign of the original technology may be patentable over the identified references, even though the original technology may not be patentable. Further, the patent search may identify “white space’ which was not previously known; that is, a technical or scientific area where there are none or a handful of prior references.  This identified “white space” can be ripe and ideal for patent protection to gain a competitive advantage, and to also expand the scientific knowledge.

 

4. Think of Additional Inventive Features Not Described in the Literature

If the patent search results indicate there are several to many patents and pending, published patent applications covering the overall inventive technology, an inventor may be able to think of inventive features not disclosed or described by the identified references. That is, if the patent search indicates a particular biotechnology neuromodulation device has been previously invented or described in medical journals, the inventor can think of additional inventive features for the device to increase the likelihood of being granted a patent for the device.  These additional inventive features can be described and claimed in the patent application, even though they may not have been included in a prototype.  After the non-provisional patent application is filed, additional features cannot be added. 

It is evident from the four reasons discussed that it is important to conduct a patent search, and that it involves a patent agent or attorney who can analyze the search results and provide guidance to the researcher, to aid in determining whether to prepare and file a non-provisional patent application and in making strategic business decisions.

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About the Author:

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George Likourezos is a patent attorney and a partner at Carter, DeLuca & Farrell LLP. He represents inventors, startups, mid-size businesses, and Fortune 100 companies in developing strategic patent portfolios to protect their innovations and technologies in the US and worldwide. He also helps companies protect their logos, trademarks, and brands. George can be reached at glikourezos@carterdeluca.com or at 631-501-5706 for a free IP consultation with the 3DHEALS community.

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