Explaining the differences between US patent practice and European patent practice
The client is an SME dedicated to developing new therapeutics. Dehns has been working with this particular client since 2014.
As a relatively young company, the client had little prior knowledge or experience of the patent system and were particularly unfamiliar with the differences between US and European practice.
The client has a number of applications that originated from the US, where they were filed with the US grace period in mind. In Europe, no such grace period exists. Therefore, several publications by the inventors that are not prior art in the US are full prior art in Europe. On that basis, all of the European applications faced significant objections.
It also transpired that there was an incomplete chain of title in relation to the rights in the applications.
Dehns Associate Dr Barbara Rigby provided extensive educational support and guidance to the client, explaining the differences between US patent practice and European patent practice, particularly with regard to an inventor’s own earlier public disclosure.
She carried out a thorough review of the prior art and the applications to try to identify patentable subject matter; this resulted in the acceptance of one of the applications. Barbara also provided significant advice relating to strategies for delaying or speeding up prosecution, the use of divisional applications and the option of filing new applications.
During routine due diligence analysis, Barbara discovered that the assignments purporting to transfer the rights in the application to the client company were deficient. She drafted appropriate documents to make the transfer of rights effective and recorded the new ownership details with the patent office.
The rights in the applications now vest properly with the client.
One of the European Applications that had faced significant objections has now been accepted.
The client now has a much better understanding and appreciation of European patent practice, including the need to control the timing of the publication of information; the option of filing additional supporting data during prosecution; the possibility of filing a divisional application to pursue unsearched subject matter; and strategies for building a patent portfolio.
With Barbara’s support, the client is now developing a new patent strategy and implementing new processes to prevent detrimental public disclosures, as well as adapting their research programme to be in line with their patent objectives and long term strategy.