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Social Enterprise

As described in our company vision, we wish Darwin Toolbox to increase access to this technology and awareness of synthetic biology. Therefore, requiring all parties to sign non-disclosure agreements and heavily protecting our intellectual property is somewhat contradictory to this goal. Therefore, the Darwin Toolbox will be launched as an open-source, social enterprise. In addition to enabling the free-trade of information associated with this technology, it will markedly simplify all of the legal issues associated with setting up this company and substantially reduce costs. Establishing world-wide patents for equipment as complex as Darwin Toolbox would cost in excess of $40,000 – if the technology is made open-source, these funds could instead be diverted into product development.

Trademarks

In order to successfully grow the company, the name “Darwin Toolbox” would need to be trademarked in order to stop others imitating it or otherwise damaging the brand. There are currently a [http://www.ipo.gov.uk/tmtext wide range of companies] that are already registered using the “Darwin” name. However, none of these use “Darwin Toolbox”, and so no claims to this name can be made. In order to register a trademark, the product class, or classes, must first be established. Initially, Darwin Toolbox may be best described by class 9:

“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.” Nice Classification, 10th edition, version 2014 (NCL(10-2014))

However, other classes must also be considered as the product develops, especially if reagents are also to be supplied with Darwin Toolbox branding. Classes that may be spanned include classes 1 (enzyme preparations for industrial usage), 5 (enzyme preparations for medical usage), and 16 (teaching materials) , amongst others.

Intellectual property

The three components of Darwin Toobox cannot currently be patented as there is no “inventive step” in making these pre-existing technologies smaller/portable. Thus, Darwin Toolbox cannot be patented as it does not meet the required criteria under the [http://www.epo.org/law-practice/legal-texts/epc.html European Patent Convention]. However, in order to protect any future intellectual property that might arise, it may be prudent to require any parties spoken to by the Darwin Toolbox team to sign Non-Disclosure Agreements in order to prevent others building on work carried out in the development of Darwin Toolbox.

Intellectual property crash course: USA vs Europe

There are several differences between the patent system in the USA and in Europe, below is a quick guide of the major issues.

1. First to File vs First to Invent

Until March 2013, the USA operated under a “first to invent” system when granting patents. This meant that whoever came up with the invention first was given the patent when two parties tried to patent the same thing. However, since March, the USA mirrors Europe’s “first to file” standing, where the first party to file the patent is granted it, regardless of time of invention.

2. Grace Period

In Europe, if an invention is made publicly available in any way (lecture, presentation to investors, iGEM presentation) before the patent is filed, it is automatically rejected. In the USA, there is a one year grace period where the inventor can still obtain a patent. However, this grace period is lost if the individual who revealed the invention is a third party, as this negates the novelty of the invention.

3. Best Practice Requirement

In the USA, to obtain a patent, an inventor must reveal the best way to practice the invention in the patent application. They cannot keep an essential part secret. However, in Europe, no such requirement exists, inventors just have to provide one way to practice the invention, regardless of how sub-optimal it is.

4. Patent Publication

In both the USA and Europe, patents are published 18 months after they are filed, regardless of whether or not they are to be granted.

5. Rights Conferred and Opposition

Once a patent has been granted in the USA, it is a property right that prevents anyone from making, selling, or using the patented invention in the entire USA. A patented granted by the European Patent Office grants these same rights in the 27 countries signed up to the European Patent Convention. However, if a party wishes to get a patent annulled in those countries, they must approach each country individually to dispute the patent (after 9 months has passed after granting), whereas the USA has one office to handle disputes throughout the country. If a patent is challenged at the EPO within 9 months of granting, the patent holder and challenger present arguments to the EPO in writing and orally before a final decision is made. If a patent is challenged in the USA, a re-examination procedure is initiated at the patent office, where any parties (not just the challenger) can present evidence to dispute the patent. However, once this evidence has been gathered, only the patent holder discusses the validity of the patent with the patent office directly.

6. Inventive Step

The most important part of the patent application is the evidence of a novel inventive step. This holds for both the European patent system, and the USA. However, the European system is much stricter in its interpretation of a novel inventive step, in that to be inventive, it must solve a technical problem in a non-obvious way, i.e. no problem solved = no inventive step; not technical (e.g. economic) = no inventive step.