The main disadvantage is that the innovation becomes publicly available.

This means your invention isn’t a secret anymore, and it may be challenging to keep competitors at bay. Once your patent is published (and in the public), it still takes about 4-5 years to gain protection from the patent, so you are exposing your secrets to the competition without protection for some time.

The other disadvantage is the costs.

Filing a biotech patent can range anywhere from $10,000 to $20,000 on average.

For a young company, this can be a major price to pay to protect your intellectual property.

One of the most common misunderstandings about filing a biotech patent is that it grants you market approval.

For example, a granted patent for an antibody doesn’t mean that your antibody can also be put on the market. This is an entirely separate regulatory process.

Biotech patents often start with broad claims covering foundational inventions. As the technology advances, more patents are filed, covering more specific targets such as compounds or applications. The more specific you get, the more careful you have to be whether there are more generic patents active.

For example, you may obtain a patent for an antibody that is directed to HER2+ as a target, like Herceptin. There may be another party with a patent that covers your sequences in a more generic sense. This means your specific sequences are still novel and inventive but far within the scope of an existing patent.

This overlap can lead to a patent conflict, where you might infringe upon the broader patent, potentially requiring you to negotiate a license or face legal challenges to commercialize your antibody.

To patent your biotech invention, clearly define and describe its unique biological or chemical components, processes or technologies, ensuring they are new, non-obvious and useful.

Outline its innovative application in the field to delineate and safeguard your intellectual property rights.

There are certain subject matters that can’t be patented:

• Subject matter that is immoral, against public order or harmful to others (or the environment)
• Living or non-living substances in nature
• Plants and animals
• Biological processes for the production of plants and animals.
• And more

Experts in your field must be able to reproduce or make use of your invention with their general knowledge.

To be considered “novel,” your invention has to be substantially different from any other invention or intellectual property that is public knowledge. One common error you can avoid: if your invention is available in any public documentation (or presented at a conference), it’s not considered novel.

To prove the inventive step in a patent claim, you must demonstrate that the invention is not merely an assembly of known ideas.

For instance, if a claim presents five unique features and prior art discloses four, the inventive step hinges on showing that the final feature isn’t an obvious addition.

This often requires a nuanced argument that combining such features from disparate documents wouldn’t have been an obvious step for experts at the time of the invention.

The claims are also assessed for enablement. This means you will be assessed whether or not you can actually put the claimed invention into practice without requiring an inventive scale.

If all these requirements are fulfilled, the responsible patent office will grant your patent.

Who owns the invention?

In Switzerland, an invention is transferred to the employer if made within the duties of an employment contract.

For most employees, an invention they make on the job would be transferred to their employer.

If there are multiple employers for the group of inventors, then all the parties that have rights are assigned to become co-owners of the patent application, which can make things tricky.

You should talk about this with all your co-inventors or the different employers before filing a patent application (i.e. how to handle all the formalities and how to sign the rights).

In the academic realm, particularly within universities, the ownership of inventions can vary based on institutional policies.

Typically, researchers at universities retain the rights to their inventions, but they may be required to grant certain rights to the university, especially if university resources or funding were used.

It’s imperative for academic inventors to consult their university’s technology transfer office to navigate the patent process and understand their rights and obligations regarding their inventions.

While patent law has been largely harmonized in the last years, there are still differences in what types of claims are patented from region to region.

It’s important to consider the differences early on, especially when you target markets outside of Europe and the U.S.

For example, you need to be careful if you’re thinking about marketing your invention in Asian countries. Given the unique health challenges and disease prevalence in Asian countries, you should align your patent claims with the prevalent health issues there.

Ensuring your patent applications cover the uses of your technology for widespread conditions can maximize its relevance and commercial viability in these markets.

For emerging companies, filing a biotech patent can be challenging, and many doubts about patentability, timelines, required data, geographical distribution or filing process arise.

Navigating biotech patents shouldn’t be a path you take alone, though.

If you want to ensure you and your startup are set up for success, adequate consultation from experts in the biotech startup field can prevent future roadblocks and pitfalls to ensure you have the right protection for your invention.

To deepen your understanding of IP strategy for biotech startups or for any legal help, you can reach out to Vossius & Partner, our partner and internationally renowned intellectual property firm.

Basel Area Business & Innovation helps you in launching a biotechnology startup. Whether you’re looking for education, consultation, accelerator or incubator programs, funding resources or networking, our services are free for qualified applicants.