This talk, aimed especially at researchers, will explain the steps to be taken to obtain adequate protection for inventions in order to facilitate the transfer of technology and, ultimately, its commercialization and monetization.
First, the different forms of protection (patents, know-how and copyright) will be briefly described, as well as the requirements for obtaining them. The concept of freedom to operate associated with the product or service to be commercialized will also be explained.
The difference between invention and commercial product will then be clarified. How it is possible to protect different aspects of the product through different patents, or by using different forms of protection. How to extrapolate protection from concrete solutions found in the laboratory, to broad inventions that can offer protection to a much more commercially interesting platform will also be covered.
There are certain discoveries that are not patentable. In addition, in recent years the criteria for exceptions to patentability that exist in Europe and the USA have been separated and have become much more demanding in the USA, especially in the area of diagnostics. What can and cannot be protected in both territories will be explained.
Software, an indispensable element in many medical devices, will be given special consideration, as it is patent-protectable under certain conditions, but can also be protected by copyright. How to take advantage of this dual protection will be explained. Protection through know-how may sometimes be the best route to follow, this too will be explained.
In the case of patents, the different existing protection routes, the times associated with protection and also the costs will be discussed. So that the researcher can adjust the protection to the timescale of their research. It will also be explained which experiments are necessary to achieve better protection, so that the effectiveness of the experimental results can be maximized.
Finally, different examples will be used to facilitate the practical application of the course content covered. A compilation will be made of the key ideas that any researcher or innovation manager should know about the protection of inventions.
Bernabé Zea is founding partner of ZBM Patents & Trademarks, one of the most reputed Spanish patent firms. Bernabé has extensive experience in preparing patentability, infringement and freedom-to- operate opinions, negotiating patent licences, conducting due diligence and drafting patents. His practice focuses on organic chemistry and pharmacy, but also includes biotechnology and biochemistry.
He frequently acts as an expert in patent court actions before Spanish courts. He has acted as a technical expert both within and outside Spain in many cases involving blockbuster drugs such as atorvastatin, escitalopram, alendronate, tamsulosine, venlafaxine and the most recent cases of fulvestrant and pemetrexed.
Bernabé is CEO of ZBM BConnect a consultancy firm that assists private companies and public research institutions when optimizing their technology transfer activities. His main duties in ZBM BC are the management of the company, obtaining technology from companies and other institutions and conducting negotiations to transfer the technology.
He started teaching at the Patent Centre of the University of Barcelona in 1988. He is an expert in searching patent and scientific literature, as he was a representative of both STN International and Chemical Abstracts Service in Spain for over 10 years. Before this, he worked for Questel-Orbit. He currently combines his position as partner at ZBM with his position as professor at the University of Barcelona.
Since 1988 he has lectured regularly on patent matters on courses organised by the Spanish Patent and Trademark Office and the Patent Centre of the University of Barcelona, as well as on the main Spanish master’s programmes on intellectual property. He has authored several articles on patent matters and patent documentation in Spanish newspapers and specialised journals.
Finally, Bernabé is vicepresident of Ahead Therapeutics. This start-up biotech company uses a proprietary technology to develop treatments for different autoimmune disorders.