WIPO SMEs Newsletter September 2012

By the SMEs Section of the World Intellectual Property Organization (WIPO)

WIPO SMEs Newsletter is a monthly e-publication providing readers with useful intellectual property (IP) information contained in articles, case studies, forthcoming IP/SMEs relevant events, and published presentations featured on our web site. We hope you will find it useful and informative. We encourage you to share the newsletter or items of interest with friends and colleagues. For past issues and information on the activities of the SMEs Section, please visit http://www.wipo.int/sme.

NEWS

First Agreements Concluded under WIPO Re:Search for Research on Neglected Tropical Diseases

Research to develop treatments for neglected tropical diseases received a boost this month as AstraZeneca concluded agreements through WIPO Re:Search with iThemba Pharmaceuticals (South Africa), the University of California, San Francisco (U.S), and the University of Dundee (UK).

The three agreements are the first partnerships established under the WIPO Re:Search initiative – an unprecedented collaboration to advance the discovery and development of treatments for neglected tropical diseases involving the World Intellectual Property Organization (WIPO), leading pharmaceutical companies, academic and national research institutions, and BIO Ventures for Global Health. The World Health Organization serves as a technical advisor to WIPO for WIPO Re:Search.

“Agreements such as these to transfer technology from one partner to another are an important measure of success for WIPO Re:Search, which we launched less than a year ago,” said WIPO Director General Francis Gurry. “We are very pleased that AstraZeneca - one of the original members of WIPO Re:Search - has successfully concluded these first agreements, and we look forward to more results in the coming weeks and months.”

Dr. Manos Perros, Head of the AstraZeneca Infection Innovative Medicines Unit, said: “As an industry, we have a great opportunity to make a real difference in global health through WIPO Re:Search by addressing the needs of the considerably underserved population suffering from neglected tropical diseases. These three partnerships are only the beginning for AstraZeneca in demonstrating how, by coming together, sharing our proprietary information and collaborating on potential solutions, we can help speed the research and development of treatments for these devastating diseases.”

Since its October 2011 launch WIPO Re:Search has grown from 30 members to 50 - from all five continents – today. Under the terms of WIPO Re:Search, organizations agree to make available intellectual property assets (such as pharmaceutical compounds, drug discovery technologies, regulatory data, and know-how), to qualified researchers anywhere in the world on a royalty-free basis, provided the research is focused on neglected tropical diseases, malaria, and tuberculosis. Any products resulting from this research will also be royalty-free for sales in least developed countries (LDCs).

Neglected tropical diseases are endemic in 149 countries and affect more than one billion people worldwide. By providing a searchable, public database of relevant, available intellectual property assets, information, and resources, WIPO Re:Search facilitates new research partnerships. BIO Ventures for Global Health, as the Partnership Hub Administrator, actively identifies partnership opportunities between members and facilitates collaborations to drive the development of new products for neglected tropical diseases, malaria, and tuberculosis.

This work led to AstraZeneca collaborating with research institutions to study novel treatments for Chagas disease, sleeping sickness, schistosomiasis (snail fever), and tuberculosis, specifically:

University of California, San Francisco (UCSF):growth and cognitive development in children, and the urinary form can increase risk for bladder cancer in adults. Kinetoplastid diseases include sleeping sickness and Chagas disease. Originally developed for osteoarthritis, AstraZeneca’s mature cathepsin inhibitors will be tested by UCSF researchers for activity in biochemical and phenotypic screens for two parasitic diseases: schistosomiasis and kinetoplastid diseases. Schistosomiasis can damage internal organs, impair
University of Dundee: Researchers will test a selection of glycogen synthase kinase (GSK)-3 inhibitors, which were originally developed for a potential treatment of Alzheimer’s disease, against parasites responsible for Chagas disease, leishmaniasis and sleeping sickness.
iThemba Pharmaceuticals:chemistry support for development of iThemba’s isocitrate lyase inhibitors, compounds intended as a novel treatment for tuberculosis. AstraZeneca will provide iThemba with computational and medicinal

“We are thrilled to see the initial results of AstraZeneca’s commitment to WIPO Re:Search,” said Don Joseph, CEO, BIO Ventures for Global Health. “These collaborations are an important achievement for WIPO Re:Search’s Partnership Hub and the first step in accelerating the development of treatments for tuberculosis, schistosomiasis, leishmaniasis, African sleeping sickness and Chagas disease.”

Historic Patent Reform Implemented by U.S. Patent and Trademark Office

The most significant reform to the U.S. patent system in more than a century took a major step forward at 12:01 am Sunday, as numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation by President Barack Obama on September 16, 2011.

Some of the new rules are as follows:

Three new administrative trial provisions --inter parts review, post-grant review, and the transitional program for covered business method patents—will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent. Additional information on third party submissions can be found here.
The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.

“These new AIA provisions now in effect give us tools to deliver cutting-edge technologies to the marketplace sooner, further reducing the backlog of patent applications, and getting high-quality patents issued faster,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “And that will translate into opportunity, growth, and jobs for large and small innovators across America.”

At 12:01 a.m. on Sunday, September 16, members of the Patent Trial and Appeal Board (PTAB) stayed open for 24 straight hours, accepting petitions requesting a variety of legal reviews. With the new rules in effect, the PTAB came into being, having been reconstituted by the AIA from the previous review board, the Board of Patent Appeals and Interferences.

The USPTO has also created new means of contact for the public to access assistance or information about the new AIA provisions: via 1-855-HELP-AIA or HELPAIA@uspto.gov.

A number of AIA provisions have already begun the implementation process, adjustments that enabled the USPTO to immediately hire new examiners, institute new patent acceleration tools, and aggressively modernize its IT infrastructure The AIA also instructed the USPTO to open new satellite offices, and the USPTO is moving forward on opening offices in Dallas-Fort Worth, Denver, and Silicon Valley. The USPTO opened a Detroit satellite office in July.

Other provisions of the AIA will go into effect on March 16, 2013, including the shift to a first-inventor-to-file system harmonizing the U.S. system with most industrialized nations. A Notice of Proposed Rulemaking has been published proposing the new rules and the final rule for the new Derivation Proceeding to ensure that the first inventor to file obtains the patent has already been published.

Source: http://www.uspto.gov/news/pr/2012/12-59.jsp

Training/Learning Resources on IP Asset Management

General Information on Training of Trainers Program, the SMEs Section, WIPO

The SMEs Section of WIPO supports the organization of Training of Trainers (TOT) Programs on Effective Management of Intellectual Property by SMEs The objective of the TOTs is to create a critical mass of trainers in the country with enough knowledge and skills to provide assistance to SMEs on effective IP asset management at a basic level. For more details, please see here.

IP PANORAMA ^TM Multimedia Toolkit

The IP PANORAMA ™ multimedia toolkit is now available in English, French, Spanish, Arabic, Hungarian, Vietnamese and Thai versions on or through the pages at http://www.wipo.int/sme/en/multimedia/ and http://www.ippanorama.com/. CD-ROMs of the English, Arabic, French and Spanish versions are also available on request. Anyone interested in receiving a free copy of the CD-ROM may email sme@wipo.int , providing the full postal address, including telephone number, and indicating the purpose for which the CD-ROM would be used.

LINKS

Catalysing Innovation in the Knowledge Triangle

The publication has been compiled to showcase the approach - its ‘what’ and its ‘how’ - taken by the European Institute of Innovation & Technology (EIT) to catalyse the knowledge triangle (business, higher education and research) in Europe. The models of governance and the activities emerging from the Institute’s first three Knowledge and Innovation Communities (KICs) are innovative and experimental and these experiences should be of particular interest to policy-makers, innovation practitioners and analysts, as well as to the new generation of potential future KICs.

The publication begins with an overview of the EIT, the KICs and their Co-location Centres (CLC), and presents their practices to foster innovation from all three sides of the knowledge triangle. Subsequent chapters highlight the emerging governance model of the KICs in more detail. They also analyse some of the practices of the EIT and the KICs in support of entrepreneurship and innovation. These include nurturing talent, bridging the innovation gap between ideas and the market and accelerating business development. Download the publication here.

Licensing Intellectual Property

This booklet forms part of our Intellectual Property (IP) Health check series of the U.K. Intellectual Property Office, a suite of booklets and online tools for business which have been developed to help you identify your intellectual assets and advise you how best to exploit and protect them.This booklet is designed to give reader an understanding of the potential benefits licensing intellectual property offers one’s business.

IP Guidelines

The IP Guidelines provide information to businesses on practical steps they can take to protect their own creativity and innovation in IP-based products and services, as well as to protect against the risk of using counterfeit materials or infringing other companies’ IP rights.

Innovation, Creativity, Growth and Progress

Intellectual Property: Source of innovation, creativity, growth and progress provides arguments for the protection of IP from economic, social and legal standpoints and provides recommendations for positive action that individuals, governments and the international community can take to protect IPRs and ensure that innovation continues to drive human progress and enhance standards of living.

Forthcoming Events

Patent Information Conference 2012 , November 6–8, 2012 (Hamburg)

The highlights in Hamburg include: the new Co-operative Patent Classification scheme from the EPO and USPTO, legal status data and changing patent law, discussion rounds on machine translation, citations, legal status, classification and open data , news on the latest development in German patent information and presentations on what makes patent searching a professional activity .

Further information is available at http://www.epo.org/learning-events/events/conferences/pi-conference.html

WIPO Executive Program: Strategic Intellectual Property Management, Cape Town , December 1 7 to 1 9, 2012

The Academy of the World Intellectual Property Organization (WIPO) is offering its Executive Program, “Strategic Intellectual Property Management”, in Cape Town, South Africa, from December 17 to 19, 2012. This is a three-day intensive training program which targets executives and managers involved in R&D. This program will be held in English, and its registration fee is US$ 2,000. A 40% discount is made available to participants from developing countries. Further information is available at the website of WIPO Executive Program.

NOTE:

The SMEs Section welcomes voluntary contributions of articles, case studies, news items, useful links and relevant information concerning forthcoming events of interest to entrepreneurs and SMEs for inclusion in future issues of this newsletter; contributions may be sent by email to sme@wipo.int.

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The past issues of this newsletter, since August 2001, may be accessed here.