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July 2016

Transitioning from Academia to Industry in Europe: Face à Face with Alokta Chakrabarti

in Face à Face by

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We have had the opportunity to hear career transition stories from many PhDs in US. It was high time that PhD CSG caught up with our folks from Europe. CSG has been blessed to have seen a surge in the participation from our European friends. I got an opportunity to interact with Dr Alokta Chakrabarti and learn about her transition from academia to industry. After a PhD from Radboud Institute for Molecular Life Sciences (Netherlands) and postdoc from University of Freiburg (Germany), Alokta was selected from amongst 170 odd candidates for her current position as a Group Leader in Cellular Drug Discovery at ProQinase. As a first in this series of dialogues, ClubSciWri presents a Face to Face interview with Alokta. 

Abhinav: Can you briefly describe your role as group leader at ProQinase?

Alokta: I’m mainly responsible for execution of customer projects, which include design of experiments, compound management and line-management duties for laboratory technicians.

Abhinav: What made you decide to move into industry rather than stay on the academic track?

Alokta: I took the decision to move to industry very early in my career as I wanted to have a hands-on experience in oncology drug development in a preclinical/clinical setting. After my Masters, I already worked as a Research Biologist in a CRO company in Kolkata, India. While working there I realized that I’m a very curious personality and hungry for more detailed ‘knowledge’ behind drug development. Then, I decided to move back to academia for PhD/Postdoc.

Abhinav: How did you prepare for your current position?

Alokta: I did not have any specific strategy. I already had a CRO experience from India. I guess my knowledge of European work culture both from the Netherlands and Germany was an advantage.

Abhinav: Do you have any advice for postdocs considering careers in the biotech and pharmaceutical industry? What can they do to make themselves competitive?

Alokta: I cannot give a general advice. It highly depends on the country one wishes to apply. I would suggest to get deep into the requirements in the industry depending on the target country and prepare your application accordingly. I hear that networking is a golden standard for getting a job in industry, however, for my position I applied just through the normal procedure.

Abhinav: How did your post-doc experience at prepare you for your position today?

Alokta: I would say that my experience from post-MSc to Postdoc was valuable for my current position. I have acquired experience in different techniques as I have completely swapped topics during each move. This has helped me to come out of my comfort zone, forced me to rethink and has opened my mind to various areas.

Abhinav: Did you use any of the resources at University of Freiburg, such as the Office of Postdoctoral Education, the Postdoctoral Association or others?

Alokta: No.

Abhinav: How has been your experience with CSG and what direction would you like CSG to take in order to make career development beyond academia less stressful for postdocs?

Alokta: I think CSG is a very strong platform to promote industry transition, especially with the current mentor-mentee program. There is always a constant help from the seniors, e.g. CV checks. However, I think it is much stronger for the USA and not many experienced people to guide for Europe. Suggestions: Podcasts could be arranged with CSG senior members who are already successful and have made a transition. Perhaps, people can invite friends/alumni who are recruiters. Important: more the presence of industry personnel, more is the chance to network and get recommendations for positions.

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To know more, connect with Alokta on LinkedIn : https://de.linkedin.com/in/alokta

 

Alokta Chakrabarti was interveiwed by Abhinav Dey. Abhinav is a postdoctoral fellow at Emory University and a Young Investigator Awardee from Alex’s Lemonade Stand Foundation for Childhood Cancer. He is also the co-founder of PhD Career Support Group (CSG) for Science PhDs and ClubSciWri

(https://www.linkedin.com/in/abhinavdey)

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This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

A job transition or a leap ahead?

in That Makes Sense by

teachers-23820

I love Science just like all of you. Why? It gives us a different sort of challenge every day to ask a pertinent question that needs to be answered. Whether it is in science teaching, scientific basic research, applied research you name it. After graduating from one of the premier institutes in India (IISc, Bangalore) I was fortunate enough to land up at a highly respected institution at the United States (NCI,NIH, Maryland) for postdoctoral research. My 5 years went like a breeze, adjusting to the new lifestyle, new area of cancer research and peer pressure of publishing along with raising 2 kids. Amidst all these challenges was a major challenge of being in J1 visa, an immigration stopgap in going ahead. My postdoctoral mentor came to my rescue and suggested me to join as a research associate at one of our Biophysics collaborator’s laboratory at UMD, Maryland since she did not had any H1B spot at that time. Without a second thought I gladly agreed because of two reasons: One, I do not have to leave the area as my family is here and we were quite settled and nestled in our new house. Second, I am having a H1B sponsor, what more to ask? My journey from NIH to UMD was easy and smooth as I had known people in both the labs, I know the PI very well so I was happy for a while. I got my permanent residency in the first year of H1B so again, I thought I was safe now. Gradually, funding became a key issue for me to survive for long in this position. In past 3 years, I had to write numerous grant proposals to different federal funding agencies, foster cross-disciplinary collaborations, and present work at several conferences and at the same time teach at the University. I realized, I did less of bench work and more of all the other sorts of work being in the University. However, I was contended that I could co-lead a MURI-DOD 5 year grant proposal that was funded to our group, I could stay for another 5 years, I was able to publish few papers. But, gradually the daunting question I had to ask to myself: next what? I started jotting down several pointers from my 8 years of post-graduation experiences and believe me this took a good amount of time to know my own strengths and weaknesses. I learnt the following from my history

  • I do have consistent publishing record, citations but not enough to apply for a tenure track position in a leading academic institution in the US
  • I am geographically limited but being in DC area is always an added advantage, key federal agencies, quite a few biopharma companies are located
  • I learnt a myriad of research areas from Biochemistry, Cell Biology, Biophysics, Physics
  • I realized I used to enjoy bench work but I do not want to continue it anymore
  • I worked on my scientific writing skills (other than writing manuscripts and book chapters) while being at UMD
  • I started being more organized and a good manager overseeing collaborations

After identifying my positive and negative areas, I was sure that academia is not the place I can survive for long until and unless I decide to go in the tenure track route. But on the other hand, I do not want to leave the active area of Science which I like the most. I started reaching out to people in my network. I was fortunate enough to be a part of CSG team with whom I can share and exchange ideas. After few months reading the various career related posts, I was interested in knowing more on scientific editing, Technology Transfer, Patenting as alternate routes of career. I must admit I didn’t understand any of those fields much as there were too much of information which made me lost. I attended career fairs in the area and that helped me to find out which are the leading/emerging biopharma companies in the DC area, attended resume writing seminars. This allowed me to write a crisp resume that can be easily picked up by the recruiters. I started narrowing down on their open job posts of my interest to see where and how I can fit in. I also spread the word to my network members including my previous mentor that I am looking for a challenging role in Biopharma Company or a federal agency such as NIH, FDA. Slowly, things were looking brighter and I was getting responses from one or the other. My experience from academia was on the greener side, my mentors were super supportive for me to get my next dream job, and my colleagues started sharing me numerous job posts. In the last 4-6 months, I was interviewed by one federal agency for a Staff Scientist position which will only open in 2017, one scientific journal for a Managing editor position, and three biopharma companies for Scientist position.

During my several phone interviews, I politely waited from the hiring manager’s end and waited for them to ask me questions. I answered promptly and when they asked me at the end if I had any questions I said “No, I think you covered anything.” The call ends. That went pretty well, I thought. I went to bed every night assuring myself that I might get an email soon

I waited a couple of weeks to get a follow-up email but no one ever contacted me. I remember being very confused. It wasn’t until much later that I realized I completely messed up the interview. I learned my lesson, however, and joined a CSG network that helped me create an intelligent interviewing strategy. This changed everything

Recently, I was invited to 3 round of onsite interviews by Novavax, Inc. I received and accepted their job offer. Unlike my earlier interviews, I nailed this interview. What did I do differently?

I sought help from the key CSG members who acted as my mentors during this job interview process namely: Avnish, Saurav, Roshni, Semanti, Ushati. They helped me in each and every step to assure that I do the right thing now for me to move ahead for the next round. While I was taking suggestion from each of their expertise, I began doing my ground homework.

Rule no 1: Know the company where you are applying and the role to the greatest possible depth. Apart from wiki, I went more to know how the company did in the past 5 years, their stock market, the reorganization, product pipelines, their potential market, following them in the biopharma newsletter. I saw the job description over and over again before each interview to see how my previous experiences aligns and I can bring that during the interview

Rule no 2: Limit you answer short and precise to only what being asked. This is something anybody coming from academia tend to go over the board just because of our sheer science enthusiasm. Again practice makes one perfect. I was asked by all the 14 interviewers “Tell me about yourself”. And so I had to narrate my 8 years’ experience in few sentences that aligns specifically with the job role.

Rule no 3: Know your interviewers history well. I did this via LinkedIn after I got to know the names. This helped me to know what their academic background is and so how the discussion should be led and what kind of questions I can ask them. Yes, you read right it is a discussion instead of question and answer session and again thanks to CSG members who made me differentiate between these two fine aspects.

Once, I followed these 3 main rules, I did exceedingly well in all the 3 round interviews. Now came the final challenge which again somebody coming from academia has never encountered: Negotiation challenge. I was in a dilemma, what should I call myself: A person who is transitioning from academia to industry (a first timer?) or an experienced person transitioning from academia to an industry (a qualified individual?) Again, my CSG mentors helped me to label myself as the second one. During the negotiation rounds, I was again fortunate enough to get promoted to the next level at UMD which gave me an upper hand to negotiate further. One thing was key: your interviews should go exceedingly good to make you confident and fit to negotiate with the company. I did accordingly with no fear of losing my current job and that I had good interviews. At this point, I was more competent and efficient to make the HR believe to be at my side. It was a long process but all ended well when I got an offer with my raised level, package and a challenging role as a QC/QA scientist.

What I learnt from my job hunting process is as follows: If you prepare correctly, interviewing for jobs in any sector can be a lot of fun. After all, it’s your chance to shine and there could be a life changing deal on the other end of the interview like there was for me. The key is to NOT be hesitant. Don’t listen to people who tell you that leaving academia for industry is like giving away your freedom. This is simply not true. In my experience, if you enjoy science, it can be done anywhere if you are competent. I enjoyed to the utmost my academic career and I look forward the challenge at the Biotechnology industry as well. When you do get called, remember to do your research, ask questions before the interview starts, and be confident in yourself and results-oriented in your approach.

Image source: https://pixabay.com/en/teachers-meeting-books-reading-23820/

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About the author: Satarupa Das is a Scientist at the Institute of Physical Sciences & Technology (Maryland, USA). In this blog she writes about her recent transition to Novavax and how she made use of her networking in PhD Career Support Group on Facebook to prepare herself  to make it through the interviews.

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This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

A Compendium on Patenting

in Sci-IP by

 

Image source: https://pixabay.com/en/motorcycle-bike-harley-davidson-1515873/

Editor’s Note: If you are interested in taking up Intellectual Property and Patenting as a career in USA, you need to clear the USPTO Patent Bar exam. Syam Anand’s book titled “Index Cards for USPTO Patent Bar Exam and Quick References on US Patent Process” is available on Amazon (https://goo.gl/dMKSvq) which is a set of more than 2000 index cards that he used to ace the USPTO Patent Bar Examination. He has been a regular author on ClubSciWri and has guided several PhD Career Support Group members on issues of patenting.  His regular discussions led him to compile a brief overview and a simplified set of FAQs to help novices understand the patenting process in US and the role of a USPTO agent in helping the inventors understand the legal language of ownership, i.e. Patenting.  

Brief Overview of the Patenting Process in USA

The U.S. Patent and Trademark Office (USPTO) offers different application routes to meet varied goals of inventors and owners of inventions. These are:

  • Provisional Applications
  • Utility Applications (Non-provisional Application)
  • Continuing Applications
    • Divisional Application
    • Continuation Application
    • Continuation-In-Part Application
  • Design Applications (only for ornamental design of a functional item)
  • Plant Applications (only for plants)
  • PCT International Applications

Inventor or owner or assignee of invention can apply. Selecting the right application route is critical for securing the right kind of patent protection for your intellectual property. The following is a brief description of the various routes available and their approximate costs.

Provisional Application

  • Lower cost to file.
  • USPTO filing fee of $260 for a large entity and $130 for a small entity.
  • Patent attorney/agent fees range from $1,500-$2,000 depending on the complexity of the invention.
  • Gives an early effective filing date. Establishing an early effective filing date is critical since this determines what references and other disclosures qualify as prior art.
  • Claims covering the invention are not required.
  • Not examined or published.

Utility (Non-provisional) Application

  • The “actual” patent application filed by the applicant that gets examined.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees range from $3,000-$5000 depending on the complexity of the invention.
  • Claims priority to the provisional application. Must be filed within one year of the provisional application filing date.
  • Requires the presence of claims covering the invention.
  • Gets published after 18 months from the priority date.

 

Divisional Application

  • Pursues unelected claims of a parent application as a result of USPTO Restriction Requirement.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

Continuation Application

  • A continuation application pursuing unclaimed subject matter of the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-2000 depending on the complexity of the invention.
  • Claims priority to the parent application. Must be filed before the parent application abandons or issues.

Continuation-in-part Application

  • A continuation application filed by the applicant to pursue new matter that is not disclosed in the parent application. The new matter must be closely related to the subject matter disclosed in the parent application.
  • USPTO filing fee of $1600 for a large entity and $730 for a small entity.
  • Patent attorney/agent fees from $1000-3000 depending on the complexity of the invention.
  • Must be filed before the parent application abandons or issues.
  • Preserves priority for the old matter that was shared in the parent application.
  • The new matter gets the priority of the filing date of the continuation-in-part application.

PCT Application (also called “international application”)

  • International Application under the Patent Cooperation Treaty (PCT).
  • USPTO filing fee of $240 for a large entity and $120 for a small entity.
  • USPTO search fee of $2,080 for a large entity and $1,040 for a small entity.
  • USPTO examination fee of $760 for large entity and $380 for small entity.
  • Patent attorney/agent fees from $3,000-$5,000 depending on the complexity of the invention.
  • Standard one format, one language application that can be used as a basis for filing patents in more than 140 member countries of the PCT.
  • USPTO accepts PCT applications in English by a U.S. national or resident.
  • Applicant has 30 months from the effective filing date of the PCT application to enter individual countries and file national stage applications.

Patent prosecution is said to begin once a patent application is filed. The application is eventually taken up for examination. Effective communication with the patent office and with the examiner, with an understanding of the nuances of patent law and the patent language, assists in making prosecution a smooth process resulting in savings of time and money. Some of the prosecution steps that applications invariably go through are briefly described below:

Restriction Requirement

  • Examiner states there are multiple inventions in the patent application being examined.
  • Applicant must elect one of the inventions designated by the examiner. Non-elected inventions can be pursued in a divisional application.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fee range from $500-1000.

Non-final Office Action

  • This is the first communication from the Examiner regarding the claims. Examiner raises objections or rejections to claims in view of the prior art.
  • Applicant is required to provide detailed responses to overcome the objections/rejections raised by the examiner. This advances the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the examiner.

Final Office Action

  • Examiner may again raise objections or rejections to claims informing why the response to the non-final action does not place the application in condition for allowance.
  • Applicant is required to provide additional detailed responses to each and every objection and rejection raised by the examiner and advance the prosecution towards allowance.
  • No USPTO fees if filed within time period for reply, extensions of time available.
  • Patent attorney/agent fees range from $750-$1500 depending upon complexity of response required to overcome objections and/or rejections stated by the Examiner.
  • Response either places the application in condition for allowance or Applicant files a request for continued examination (RCE).

Notice of Allowance

  • Informs the applicant that the patent is ready for issue.
  • USPTO issue fee is $960 for large entity, $480 for small entity
  • Patent attorney/agent fees $500.
  • After the application grants, you get 20 years of patent term from the filing date.

Maintenance Fees

  • Fees associated with maintaining the patent in force after issuance, late payment due if payment within 6 months after fee is due
  • 1st fee (due at 3.5 year): $1600 for large entity, $800 for small entity
  • 2nd fee (due at 7.5 year): $3600 for large entity, $1800 for small entity
  • 3rd fee (due at 11.5 year): $7400 for large entity, $3700 for small entity

Glossary of important terms

Abandon                                  Applications are usually abandoned when responses that are due are not submitted in a timely fashion to the USPTO. Abandoned applications cannot mature into patents. Prosecution stops.

Allowance                                A notice of allowance from USPTO informs that the application meets all the requirements for a patent to be granted.

 

Applicant                                 Can be the inventor(s), owner of the invention or assignee of the rights of the invention.

 

Assignee                                  The person(s) who hold rights to the invention, for example, the employer of the inventor(s).

 

Election                                   Choosing one of the inventions in an application for prosecution as a result of restriction requirement by an examiner.

 

Effective filing date                  The earliest filing date that can be claimed for an application. The effective filing date may be (i) actual filing date of the application; (ii) the date of the earlier-filed application to which priority is claimed.

 

Extension                                 Formal requests for extensions of time for filing responses can be obtained for a fee. Cannot exceed more than 6 months.

 

Filing date                               The date when the application is submitted to USPTO.

 

Grant                                      Grant of the patent. This gives rights to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. A bond paper copy of the patent grant is ribboned, sealed, and mailed by USPTO.

 

New matter                              Subject matter not initially disclosed in the application. USPTO does not allow new matter to be added at any time during prosecution.

 

Objection/Rejection                 The examiner issues an office action objecting/rejecting the claims during prosecution, based on prior art. When the office action is issued, the objections/rejections have to be overcome in order to advance the prosecution. A critical and significant portion of patent prosecution.

 

Patent Agent                            A person who has passed the Patent Bar examination administered by USPTO for registration at the USPTO.

 

Prior Art                                 The universe of printed publications, disclosures, talks, and other information that are publically available.

 

Publication                              USPTO publishes all applications around 18 months. The contents of the application are publicly available after this. In certain cases, a request can be made to withhold from publication.

 

Response                                 Formal filing of communications with the USPTO within the required time periods. They have to fully meet the requirements of form and content. A critical and significant portion of patent prosecution.

 

Restriction requirement           Placed on an application when the examiner believes that there is more than one claimed invention in an application. The applicant has to elect one invention for the prosecution to progress.

 

Subject matter                         The subject to which the application and the invention is directed.

 

 

Frequently Asked Questions (FAQs)

What is a patent?

A patent is an exclusive right for a limited time for an invention.

What are the exclusive rights for?

The rights are excluding others from making, using, selling, offering for selling and importing the invention.

For how long is a patent valid?

Twenty years from the application filing date.

What is an invention?

An invention is a novel and non-obvious useful tangible solution to a problem. Notable exceptions are design patents that cover external appearance of objects.

What is novel?

In simple terms anything that is new, man-made, and does not exist previously and has not been disclosed before.

What is non-obvious?

In simple terms anything that is not an incremental improvement (i.e. obvious improvement) over previously known product or process.

Can I patent anything and everything that meet the criteria of utility, novelty and non-obviousness?

No, you cannot. There are country-specific rules on what is and what is not patentable.

Can I patent, if I publish?

In the US, you may, within one year of publishing and obtain rights in the US. In all other countries you loose your rights if you publish before submit a patent application.

Can I patent, if I disclose?

In the US, you may, within one year of disclosing your invention. In all other countries you loose your rights, if you disclose your invention before submitting a patent application.

What kinds of disclosures affect the prospects of patenting?

In general, any public disclosure as opposed to disclosure within a confidential meeting (for example lab meeting) or disclosures protected by non-disclosure agreements.

Do I have to file a patent to practice my invention?

No. You are not required to file a patent to practice your invention. But without patent protection, you risk your invention being copied by others.

Can a person or entity that has already obtained a patent on the same invention, stop me from practicing the invention?

Yes. A patent gives the owner of the patent, exclusive constitutionally bestowed rights to stop others from practicing the invention described in the patent. This falls under patent infringement.

I have an idea that could be patentable, what should I do first?

The first question to ask is, who owns the idea. An easy way to answer this question is to ask yourself, what are your obligations to your employer.

I work in a lab and my idea is related to the project I work on for my employer. Do I own the rights to the idea?

In general, no. Your employer owns the right to the idea. Contact your technology transfer office/center. They will guide you.

I work in a lab and my idea is independent of the project I work on for my employer. But I used materials and equipment in the lab for testing and perfecting my idea. Do I own the rights to the idea?

I work in a lab and my idea is independent of the project I work on for my employer. Also, I did not use materials or equipment from my employer and instead used my own funds for testing and perfecting my idea. Do I own the rights to the idea?

Yes.

My employer decided not to pursue my invention. Is this a dead end for my invention?

No. They could give you the ownership rights for the invention for free or a cost. They could also license for free or a cost. Where federal funding is involved, even the federal government can give you the rights for free or a fee.

What are the things to remember when deciding whether to patent an invention or not on my own?

Two things to contemplate are money and time. Obtaining a patent costs money in terms of filing fees, maintenance fees, and attorney fees. It is up to the inventor to evaluate the cost benefit of filing and maintaining a patent.

I am good at generating ideas but not good at perfecting them. Can I file a patent application for an imperfect idea?

In fact yes, if the idea is not completely abstract and can be described adequately to convincingly prove that it can work as described.

I am good at generating and testing ideas and even perfecting them. But I do not have the experience or inclination to manufacture or market my invention. Is this worthwhile to pursue a patent application?

Yes. Patents can be sold or licensed to others who are interested buyers. They are a form of intellectual property.

Can I patent an idea that is just an idea?
No. Ideas that do not describe an identifiable embodiment or do not have any functionality are not patentable.

Who can file a patent application?
Inventors, owners and individuals or organizations with sufficient proprietary interest in the invention can file a patent application for an invention.

When should I file a patent?
Usually when your invention is enabled and before you disclose your invention to public, for example through seminars or trade shows, or even before signing a potential license agreement with a third party.

How do I know that my invention is enabled?
In simple terms, your invention is enabled if it functions as described by you and extensive experimentation is not required to practice it.

Do I have to submit a working prototype of the invention when I am filing a patent application?
No.

I do not know how my invention works, but it works. In other words, I do not know the scientific principle that makes my invention work. Can I file a patent application for the said invention?
Yes.

Why should I file a patent application?
Once a patent is granted, its gives the owner of the patent, rights to exclude others from using/copying, selling, offering for sale and importing the invention from another country.

Why should I file a patent application if my employer owns the rights to my invention?
You may benefit from financial and professional incentives that many employers give for generating intellectual property that adds value to the employer.

My employer owns the invention I wish to patent. How should I go about filing a patent application for my invention?
Please contact your employers. They will guide you. In general, industries have patent liaisons or counsels and academic organizations have technology transfer experts who will guide you.

My employer does not own the invention I wish to patent. How should I go about filing a patent application for my invention?
You can file a patent application all by yourself (called pro se) or with the help of a professional who has knowledge about patent laws.

What kind of professional help should I seek for when I am filing a patent application myself?
Almost all countries have patent agents who are qualified to represent inventors and registered with the country-specific patent office. You may discuss your invention with patent agents or patent attorneys (who are also lawyers) after signing non-disclosure or confidentiality agreements with them.

Am I required to go through a patent agent to file a patent application?
No. In fact, you can file patent applications pro se, that is, by yourself. However, most patent offices recommend that prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications.

Can I take the help of a patent agent in India for representing me at the United States Patent and Trademark Office (USPTO)?
No. Only candidates who pass the USPTO registration examination (also known as the patent bar exam) and registered at USPTO can represent inventors in the US. However, inventors may utilize the expertise of other individuals including patent professionals in other countries to prepare and submit applications. In this scenario, the inventor will be representing himself/herself at the USPTO. Similarly, only candidates who have passed the Indian Patent Agent examination and registered at the Indian patent office to practice Indian patent law can represent you at the Indian Patent Office.

How does the services of a patent agent help in the preparation and prosecution of applications at the USPTO?
When filing an application at a patent office, there are technical and legal requirements to be met. A patent is only as good as what is claimed and how it is described in a patent application. A strong patent protection requires good patent application drafting skills. A good patent helps to prevent others from designing around your invention and prevent others from entering the same market space. An experienced patent attorney or agent brings such skills in drafting patent applications.

In addition, the attorney/agent also helps in prosecuting the application before the patent office. Once an application is examined, the patent office sends out office actions- official communications to the inventor, and may reject or allow based on the merits of the patent application. The attorney/agent, on behalf of the inventor, can present arguments to meet the legal and technical thresholds set by the patent office and help in obtaining a patent. This requires an understanding of the patent law and claim language.

What are the contents of a patent application?
The main contents of a patent application are a written description of your invention called specification, drawings that help to describe the invention and specific claims that you seek exclusive protection for based on the specification. Among other things, it also contains information about the inventor, owner and representative of the invention.

How long does it take to file a patent application?
It takes anywhere from one week to more than a month to file a patent application. The main factor that determines the time taken is drafting a patent application, which usually depends on the nature of the invention. Complex inventions, such as inventions in biotechnology and life sciences take around 2-3 weeks to draft good patent application.

How long does it take to obtain a patent after filing an application?
In the US it may take from 1-3 years depending upon the area and the procedure for examination used. There are accelerated procedures available for an increased fee. In India it takes up to 8 years to obtain a patent.

Where do I file my patent?
You need to file patents in countries in which you wish for patent protection. Many inventors choose to file in United States because United States is one of the largest economies in the world. Other regions that people consider are Europe, Japan, China, Brazil, and India.

I am not a US citizen, but my invention was made in the US. Should I file for patent in the US or the country of my citizenship?
Any person can file for a patent in US. However, if the invention was made in US and the inventor wants to first file a patent outside US, the inventor has to apply for a foreign filing license.

I do not want to obtain a foreign filing license for my invention. What are the consequences?
Not getting a license and still filing outside will cost US patent.

What are the typical initial costs involved in filing a patent application in the US?

Preparing a US patent application can cost anywhere from 1500-10000 US$ depending on nature, complexity of patent application, type of patent application and involvement and nature of patent agent (individual, small firm, big firm) or doing it pro se.

What are the typical initial costs involved in filing a patent application in India?

Preparing an Indian patent application can cost anywhere from 50,000 to 1,00,000 INR depending on nature, complexity of patent application, type of patent application and involvement and nature of patent agent (individual, small firm, big firm) or doing it pro se.

How does one choose a patent agent/firm?

The best way is to get referred to by someone who has used the agent/firm before. If not, look for registered patent attorneys and agents listed in the patent office one wishes to file. Other factors to consider are firm’s expertise with respect to the nature of invention (biology, chemistry, material science, computer software etc), experience, and affordability. Patent firms usually employ patent agents or technical specialists who assist patent agents and they cover most subject areas.

What are the typical steps involved in filing a patent application with the help of a patent agent or patent firm?

Submit an invention disclosure to the agent/firm that describes the invention. This is typically followed by an interview with the agent/firm. The agent/firm may request additional information during the drafting process. Professional drawings also may be required. The completed application is filed by the agent/firm on the behalf of inventor/owner of the invention to the patent office.

Can I obtain an international patent for my invention?

No. There is no such thing as an international patent. Individual countries grant patents.

How can I get patent protection in many countries?
There are two options.
1. One can file separate patent applications in the selected countries.
2. One can file an application under the Patent Cooperation Treaty (PCT). The PCT application acts a common patent application, and can be used as a basis to file country specific patent applications. These country-specific applications are called national stage applications.

What are the advantages of filing of a PCT application or patent applications in several different countries myself versus using a patent agent?

Experienced patent agents/firms will be familiar working with associates/firms in different countries. Without professional assistance, missed deadlines and incomplete responses to office actions originating from many countries at regular intervals may be become overwhelming and more expensive. Keep in mind that in addition to the technical and legal requirements there are language requirements in the different countries.

Can I use a patent agent/firm in US (or in India) for handling the filing of PCT applications?

Yes. PCT applications can be filed in any country that is signatory to the Patent Cooperation Treaty. Once the application enters the national stage in different countries, the primary agent/firm will coordinate with the foreign agents/firms who are registered to practice in the respective countries.

Are the contents of an application held in confidence by a patent agent?

Yes. It is a patent office requirement and there are penalties for not following this.

Can my patent agent disclose the contents of my application to a third party without my permission even if I do not sign a confidentiality or non-disclosure agreement?

No

My patent agent/firm is asking for a power of attorney for filing my application with the patent office. Should I give one?

Yes. The agent/firm requires a recorded power of attorney to communicate with the patent office on your behalf.

Are the contents of an application held in confidence by patent offices?

Yes, until the application gets published by the patent office after a certain period of time after filing of the application. This is 18 months in the USPTO.

Can I prevent publication? How long does it protect against disclosure?

Yes. You may submit a non-publication request in the USPTO. It protects against disclosure until the patent is granted.

What is patent infringement?

Making, using, selling, offering for selling and importing the invention to which one does not hold patent rights is considered infringement.

I have a US patent for an invention. I see that the product covered under the granted patent is sold commercially in India. Do I have the rights to stop this commercial activity?

No. Patents rights are only for the region/country that granted the patent.

I have a US patent for an invention. I see that the product covered under the granted patent is sold commercially in the US. Do I have the rights to stop this commercial activity?

Yes.

I have filed a US patent application for an invention. I see that the product described in the patent application is sold commercially in the US. Do I have the rights to stop this commercial activity?

No. A patent application is just a patent application. You have no rights until it is granted.

I have filed a PCT application for an invention made in the US. I see that the product described in the patent application is sold commercially in India and USA. Do I have the rights to stop this commercial activity?

No. A patent application is just a patent application. You have no rights until it is granted.

 

 

 

Syam

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

 

For more info, get Syam’s book from Amazon https://goo.gl/dMKSvq

Syam Book

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Laapataa- One Among Us

in Laapataa- The Indian PhD/That Makes Sense by

“It’s best to be wary of catch-phrases — be it globalization or patriotism –, and not base important decisions on them, because they can be used in any which way.  Which catch-phrases did you come across today?”

One Among Us - July 2016

 

15aug14-271x300

 

About the cartoonist: Sujit did his PhD from CSA (Indian Institute of Science, Bangalore) and joined Philips. After few years in the industry he joined IIIT Bangalore as an Assistant Professor and continues to teach there. Creator of ” Lapataa”- A fictional IISCian as he dodges through the reality of PhD. It is one of the fantastic piece of art which ClubSciWri thought needs to preserved and showed to the world and other alumni. The clips connect all of us whether it is an IIScian or a non-IIScian who did their PhD in India.

http://www.iiitb.ac.in/faculty/sujit-kumar-chakrabarti

https://sites.google.com/site/sujitkc/professional2/professional-biography

©Sujit Kumar Chakrabarti

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This work by ClubSciWri is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License.

The Resolution of Monera

in Sci-Pourri/Theory of Creativity by

E.coli:  Greetings dear Bacilli, Cocci, Spirochaetes, Mycoplasms and offspring. I, Escherichia coli K-12 of family Enterobacteriaceae, welcome you to the General Bacterial Gathering. It is my privilege as the spokes-microbe to throw some light … 

fig-1

**Photobacterium illuminate the stage – metabolism at its brightest**

…on the latest fissions, fusions and multiplications of plans made by us in our last bacterial annum. Before I start off with the regular proceedings, I would like everyone to stand on their flagellas, those atrichous on their fimbriae or pili to take a moment to stand in memory of those who denature their plasmids in the hellish autoclave just to maintain our great reputation of proper contamination. Remember, true martyrs only lyse physically; but they are forever alive in our genomes!

MRSA: DOWN WITH RESTRICTION DIGESTIONS!!!!
               PROMOTE BETA-LACTAMASE SECRETIONS!!

Mr. Salmonella :

                 Achooooooooooooo !!!!

E.coli:  Mr. Typhi, please exocytose that recombinant Influenza receptor before the meeting in the human world. According to the rules, sneezing, puking or conjugating here will not be tolerated! Anyway, I would like to invite Monsieur Vibrio cholerae to say a few words. 

 

fig-2

MRSA:       M! METH R! RES! S! STAPH! A! AUREUS!..

                  MRSA!!! MRSA!!!!! MRSA!!!!!

Vibrio:     

                 Merci Monsieur E.Coli! Bon jour! Vee, ze bactereaial generha, r eh uge clan veet many of uz replicating in uman intesteens. Vee r ze one whoo geef stoopid umans aver soofiseecatd diseeses and make dem leak zeir debrhi frhom both ends, but Mon du! vee r beeing man-andled!! Ze only theengs dat sum of uz r dooing now r running fhamilee-planning on agaar platez, excreeting ze enzymes, beeing cukked in ze ovens to become ze vaccines! 

fig-3fig-13

Laast but not ze least, seeting in ze UV chaember running ze operons, feed on ze lactose sans saveur and surhvyv on toxic za fungal wastez. Sum of ouverh own kingdom iz secreeting anteebioteecs!! Quelle honte!!

fig-4fig-7

MRSA:      DOWN WITH LACTOSE OPERONS!

B. subtilis:

                  Now, now, deary, let’s not point flagelle at anybody. We all do our jobs…In my times there was full ‘freedom of secretion’ in our constitution. I will make what I like! Erwinia sweetheart…you feeling ok?…..

Lady Erwinia collapses and lands slime-layer first onto the mud. The Clostridium paramedics run to the rescue. The member is recognized as Lady Erwinia Amylovora who once belonged to same family as her cousin E.Coli but betrayed her family by shifting to plants from the natural habitat of animal intestines. She used to survive on simple requirements but things were getting so complex nowadays that she couldn’t get proper intake daily for herself and her trailing species. CSC gives her a glucose shot.

[mild tremors felt across the meeting venue]

E. coli :

                 Oh dear…tremors are not a good sign. I am sorry as to what happened to my cousin Erwinia. By seeing her condition we can clearly say that we are running short of nutrients. We need to act fast! Members, we have decided to go ahead with ‘Project Sweet Revolution’. We will immediately start synthesizing more glucose and conserve it for our every proliferating offspring!! Our phototrophic community has agreed to produce the required amounts in return of necessary resources and full time protection. Mr.Azotobacter, Mr.Rhizobium and members of CSC have volunteered to help the autotrophic minority to boost their energy-less electrons.

fig-5

MRSA:       MOVE OUT OF PLATES AND AGAR JUNK,

                 SWITCH TO INTESTINES OF SKUNK!

Mr. Proteus rudely lets out a gush of suffocating ammonia gas. Everyone in the vicinity shuts up their mesosomes.

Madame Klebsiella:

                  

                 I would be truly grateful if the spokes-microbe could kindly solve property and nutrient rights between all of us enterobacterea within the intestines. There is freedom of secretion but no liberty of gas production! We need a motion on this.

MRSA:      IF WE DON’T GET NO FOOD.

                YOU DON’T GET NO PERFUME!

E.coli:   

                 Madame Klebsiella it is all about proper motions, isn’t it? Unfortunately there is no precedent about the dispersion of  obnoxious gases. We shall deal with the bio-geo-chemical cycling issues in the near future!

                 Let’s concentrate on our latest human problems. We are now very vulnerable to their loops. The other day Mrs. Nessiera was forced to crack open her lipopolysaccharide coat to show her peptidoglycan content. But do not worry. Dr. Thermus‘s and Dr. Pyrolobus‘s lab has had a major breakthrough to counteract this embarrassment. Their research was focused on evolving a new pseudomurein layer with tighter isoprene chains and lower lipids. We are excited to reveal that their latest experiments can guarantee us coats which can resist an astounding 115°C.

fig-6fig-8

[**Applause**]

Mrs. Rickettsia gives Rickettsia Jr. a tolerably warm hug. The family have huge hopes from junior who shows great potential to become an official and responsible human pathogen.

fig-9

Mr. Mycobacterium :

                 We are having terrible experience infecting humans nowadays. Just the other day, my poor twins had innocently infected a human while playing in the backyard. They had a narrow escape from a terrible aniline dye and escaped. Their brand new mycolic-acid-covering was permanently dyed with the stain. Just imagine the torment the two are going through at this young age!

fig-10

MRSA :      BETTER DEAD THAN STAINED,

                 BETTER SOGGY THAN DRAINED!!

[Moderate tremors rock the meeting venue…..]

E.coli :    

                 Oh dear its getting close. We are all glad that your kin eluded the evil human eye! For all those interested, Mrs. Diphtheriae, Mr.Tetani and Mrs. Yersinia will be giving micro-public demonstrations about the increasing audacity of humans who try to paint us red! I have requested our Pseudomonas Culture Foundation labs to work on new genes that would help us avoid the binding to dyes and provide more privacy from the human blood T-cells, B-cells and immunoglobulins. Signora Shigella, you wish to speak?

fig-11

MRSA:       FOR BOWELS WE STRIVE…

                  FOR BINARY FISSIONS WE THRIVE!!

Signora Shigella:

                 Si, grazie mille! Io sono Shigella. Sorry for my English! I think we need to be friendly with virooses. T-even coliphages ave sent spies with Dee-En-Aa to find us. We should be smart. We should not fall for tricks. We don’t be stupid. I virooses sono belle.  If you date, the phages penetrate and control tutii genomi, stronza! Be vhery carefool of beeutee and sexy viroos belle! La famiglia Viroosa is stronger than La Camorra, La Mafia! They scare those umans. To win, we should not loss our ATPs and nucleotides in Leeteec and Leesogenic battglia! Forza Monera!!!

fig-12

MRSA :      DOWN WITH VIRALISM………FREEDOM TO SLIME-ISM

[Very strong tremors unbalance the meeting participants]

E.coli :

                 Not too far now I guess. I hear you signora! We have called upon a capable toxin releasing team from various families like the great biopesticide Dr. B. thuringiensis and Dr. C. botulinum to try and evolve a new antiviral machinery. Till now they have not been very successful. Microbes of the community, lend me your ribosomes (and translate accordingly). We placed our pili in this world long before those humans! We were told by nature to transcribe new proteins and create whom we know today as the humans. It took us great time to sculpture these evolutionary descendents who have now started using us for their benefits! They are abusing and murdering countless of our numbers every second! My nucleosome swells with grief when I see the debris of our fellow microbes in the enzyme cemetery acting as the sites for endonuclease, exonuclease and protease activity. May I request Streptococcus and Pseudomonas rough families to kindly undergo transformation if you find any useful genome in the cemetery.

MRSA :       ALL HAIL RECYCLED MARTYRS!!

A huge group is found rushing towards the debris, competing for the spoils of the war. Inspector Lactobacillus denies them exit fas the debri genomes may have transduced viral contamination. A terrible Central Dogma hazard!!

E.coli. :

                 Friends, family and offspring…lend me your flagella, cilia and ear-glycans. We help the humans to digest their food and what do we get in return? A red hot sterilized nichrome loop burning our precious genes to carbon dioxide or perhaps a one way ticket to UV chamber where we are brutally apprehended by hard wavelengths, forced to gobble up tasteless lactose! World was ours and now our own evolved multicellular brats are killing and rampaging all our resources. They forget that everything had started with us and everything ends with us!

fig-14

E.coli :

                 It is now time to put our nuclei together and take a strong decision. We cannot go against nature’s wishes. Suffering members of Kingdom Monera, let’s unite and pass the ultimate resolution. We vow to be united in the decision taken by the majority of flagellas raised.

MRSA:       DOWN WITH……

E.coil :    

                 SHUT UP MRSA!!!!! HERE IT IS!!! This is our chance to seek vengeance! To give back as much pain as we  have suffered. The humans will finally feel the wrath of the Monera.  GET TO WORK EVERYONE!!!!!

fig-15

Very strong quakes rip apart the venue. All enterobacters take position, ready for action. Commensals flee south while MRSA disperses into capillaries.

THE PANIPURI HAS FINALLY REACHED THE SMALL INTESTINES. IT’S TIME TO BREAKDOWN SOME GOLGAPPA, WELCOME NEW MEMBERS AND MAKE SOME GAS.

[Evil Laugh and Painful Indigestion]

THE END

 

Sourav

About the author: Sourav Banerjee has completed his PhD from MRC Protein Phosphorylation unit, Dundee, UK and is currently working as a postdoctoral associate at UC San Diego, USA. His interests include traveling, eating and numismatics.

vibhav

About the illustrator: Vibhav Nadkarni completed his post-graduation in Biosciences from University of Auckland. He is currently considering a career move to the field of Bioimaging. He has previously worked with Regenerative Medical Services and SRL Ranbaxy. He is constantly exploring ways to incorporate creativity into life sciences. In his spare time, he works on building his online travel venture. His interests include sketching/painting and traveling.

Shraddha

Edited and Fake accented by: Shraddha Lad has recently finished her PhD in Epigenetics and Imprinting as a Marie Skłodowska-Curie Early Stage Researcher from Naples, Italy. She is currently at crossroads about her future career (Academia versus Industry) and is using the publication of her manuscript as an excuse to delay making that decision (jk!). In her free time she enjoys reading, tasting different cuisines, gaming and music.

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