Step-By-Step Guide to Searching for IP

Biotech startups’ business value is driven by science and science is… slow. So how do you prove to investors that what you’re building is valuable while keeping your competition at bay? Enter patents, the primary way of defending the time and dollars you’ve invested into R&D.

This is a short guide on how to get started on the basics to answering questions such as: What patents (or applications) are you starting with? What future patents should you file? What is the “whitespace opportunity” in the IP landscape (left unblocked by others) that you will fill?

It is well worth it to hire professional IP counsel to work with you on this (check out our suggestions here), and our intent here is to give you the foundations to best leverage their services

1. What is patentable?

This article is adapted from Pillar VC Partner, Russ Wilcox’s guide, A Primer on Patents.

When starting out you should develop a solid understanding of how patents work.

First, what is patentable? Patents must be:

• Eligible: You can patent processes, machines, articles of manufacture, and compositions of matter (eg a new drug). You cannot patent things naturally occurring in nature, like a protein or metabolite already present in natural systems.
• Useful: The invention must provide a benefit that you can describe.
• Novel: At least one element of your invention was not anticipated by others before, e.g. described in a patent or publication. A prior publication of the idea (even your own!) is considered “prior art” and will knock out your patent, so it is critical to file before you publish or announce your work.
• Non-Obvious: Your invention cannot consist of a group of elements that someone skilled in the art of your field would have anticipated and could readily combine – it has to show ingenuity. This is a somewhat subjective test that varies from examiner to examiner. For a real example of this subjectivity, read the debate of the original CRISPR patents here.
• Enabled: Your disclosure has to be specific enough that people of technical skill in your field also can understand, make, and use the invention without your assistance. That means the invention must have been “reduced to practice” and ideally your patent will provide data to support your claims. That said, some inventors file for a patent while the invention is still on the drawing board, and they only describe how they would build the invention. This is called filing a “paper patent.” Paper patents are easier to file, but are less likely to survive a court challenge.

The key takeaway is that a patent gives you the right to block others, not a license to practice your invention (as others could use their patents to block you). We repeat – patents are fundamentally a defensive mechanism to ward off competitors! Therefore, filing a patent is just the first step in your biotech building journey. For more on this, check out Russ Wilcox’s Guide to Building an IP Fortress.

2. What should you patent?

Consider both your prior work at a university and the technical work you plan on doing as it relates to your final product, i.e. a therapeutic, research tool/instrument or diagnostic.

We worked with Goodwin IP Attorney, Olivia Uitto, to put together this IP and inventions checklist to help you brainstorm core and adjacent patents you should apply for.

Create a list of everything in your planned work that fits the description in this checklist, and consider how you could protect it, e.g. by filing a provisional patent or keeping it as a trade secret.

Generally speaking, patents for a composition of matter (e.g. a chemical compound) are the strongest since you could tangibly obtain and analyze a competitor’s product to prove that they’ve infringed on your invention.

If you cannot prove IP infringement from something externally observable about your competitor’s product, your patent will be much harder to enforce.

Consider an example where you patent a technique for discovering new drug targets. What could you observe about a competitor that shows their infringement? Or consider a patent for repurposing a drug already available on the market to treat a new disease. How hard would it be to identify cases where a physician prescribed the drug off-label, and would you chase down every single one (and risk the negative PR associated)? 

Understanding how patents work is important because if your biotech is going to make a big impact, i.e. on the scale of millions or billions of dollars, expect that others will try their best to prove you have infringed on their IP or try to invalidate your patents.

Note: this is not really relevant at the earliest stages — IP lawsuits typically only happen once you’ve been acquired by a larger biopharma company and have the legal budgets to go to court.

3. How to map the IP landscape

Now that you know a little about patents, generate a map of relevant intellectual property in the space you are working. You’ll want to identify a tree of every relevant patent, paper reference, author or date when something is disclosed.

Google Patents is fine as a free patent search tool to get started. We recommend using their “Find Prior Art” tool to help you build out a list of relevant keywords.

Example: Using Google Patent’s “Find Prior Art”