Case Study: How patent attorneys and clients work together
‘A good experience is really about effective communication between the patent attorney and the inventor...’
So when clinical case studies showed Dr Gorgani’s treatment could normalise patients’ blood sugar levels without the side effects usually associated with anti-diabetes drugs and without losing effectiveness in the way that currently marketed treatments do, he sought the help of a patent attorney.
'I had no idea at that time. I’m a scientist so I knew what a patent does, but I didn’t know how to draft and prosecute the patent application,' he says. Dr Gorgani, who is founder and chief executive officer of OzStar Therapeutics, which is developing the treatment, contacted an IP attorney firm.
The firm provided Dr Gorgani with a comprehensive overview of the patenting process, including how best to draft the application and which information and experimental data to include. 'I got all the information to them and they cleaned it up and made it such that we could include it in our specification,' Gorgani says.
It was of great assistance that the patent attorney is a former medical researcher who understood the technical aspects of the invention as well as the necessary legal requirements for obtaining patent protection. In fact, all registered Australian (Trans-Tasman) patent attorneys are required to have a technical or scientific degree in patentable subject matter.
Along with the Australian patent, Dr Gorgani also applied for international patents, choosing 12 countries according to the greatest market potential for Type 2 diabetes treatment.
He says he enjoyed working closely with his attorney. ‘Choosing a patent attorney that you can get along with and work transparently with are the key aspects involved in successful patent drafting and prosecution,’ he says.
Dr Grant Shoebridge, the attorney working with Dr Gorgani, agrees, saying communication and trust are vital.
'A good experience is really about effective communication between the patent attorney and the inventor,' he says. 'Beneficial outcomes are achieved when the inventor provides full disclosure in relation to his invention and does not hold back any information.'
The attorney also needs to be upfront with the client about all of the steps involved in the patent process including, most importantly, the timing and costs.
Dr Gorgani is a good client to work with because he is passionate about his invention and really understands the technology. 'He provides excellent technical information that I can use during the prosecution of his applications and that contributes to maximising the scope of protection that is ultimately obtained' Dr Shoebridge says.