Telecan Pharma Discoveries IP Case Study: An Analysis of Patent Law

This case study examines the patent rights of Telecan Pharma regarding their invention TC-025 and its potential use in treating melanoma, in light of existing patents like Nitroponol. The analysis includes whether Telecan can patent the specific medical treatment in Canada, focusing on novelty, utility, and ingenuity. It also addresses the implications of Jane's prior work and whether testing TC-025 in a petri dish demonstrates a useful function. The case further explores which countries Telecan would need to file patent applications, considering the previous patent for Nitroponol, which shares the same chemical composition as TC-025 and its expiry status in different European countries. Desklib provides access to similar case studies and solved assignments for students.

Running head: LAW
Patent Laws
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LAW
Patent
A patent is the right given to the inventor of an invention on exclusivity of his property. In
many countries it is done through the patent and trademark offices. It prevents other people
from selling, making or using the invention with a given jurisprudence (Mueller, n.d.). Patent
applied or patent pending is an invention that has already been filed. In Canada, the office is
called Canadian Intellectual Property Office(CIPO).
The rights given to Telecan for patent are as follows;
The right to make their own inventions. It is important to not that patenting does not give the
owners in this case Telecan to make their own invention but rather the right to exclude others
from importing using or making the invention. It gives Telecan the right to utilize their
invention from the use of heterocyclic compounds. However, the right to make their own
invention is also determined by the rights of others who may have different patents on the
product but touching the same chemical substance. If another party owns the patent, it may
prevent the patentee from utilizing his own invention. In this case, Telecan must re-apply for
the patent in some of the countries because they can use it in the countries apart from Canada
(Amani, 2016).
In which countries would applications for a patent have to be filed by Telecan?
After realizing that the chemical compound was leading somewhere and was reactive to the
cellular pigment, Jane was told to search which country the chemical substance had been
patented. She found that previously a patent had been issued on a chemical substance known
as Nitroponol, that had the same chemical composition as TC-025. It had only been issued in
three European countries and that is Germany, United kingdom and France in 1993. It had

LAW
however expired in France and Germany in 2006 and was subject to re application in the two
countries. The only country the patent had not expired is United Kingdom (Eiland, 2009).
How should the invention from this finding be described in a patent?
The invention is not based on the discovery of compound TC-025. The compound had
already been discovered in 1993 and patented in the above mentioned countries. The
invention is in the use of the chemical substance TC-025 in treatment of melonama of the
skin cancer. Telecan had been trying to see the reaction of the chemical compound on
specific cells that had cancer and finally the compound had reacted to one of the experiments
(Halbert, 2005).
Jane had heard that a specific type of medical treatment was not patentable in Canada.
She wondered if that would have an impact on getting a patent if it was described as
TC-025 to treat melanoma or a specific type of cancer?
Jane is right. However, they can patent the specific type of compound in TC-025 in treating a
specific type of cancer. If Canada cannot patent the specific medical treatment, then the
company can patent the compound to treat a specific type of cancer or melonama. However,
the company has to show that the invention that is being patented has utility, is novel and is
inventive so as to be allowed to patent the compound TC-025.
Novelty means that for Telecan to be granted the patent, it must be the original inventor of
the specific compound treating the specific type of cancer. This is true since no other
company has discovered this. The invention has also not been made public before the
application (Pattinson, 2009).
Secondly, utility means that a valid patent cannot be given for something that does not work.
This chemical is working on the specific cancerous cell and therefore patentable.

LAW
Lastly, is the ingenuity which is the improvement of something which has already existed.
Would the previous patent on Nitroponol prevent Telecan from getting a patent?
Yes. This is because the compound had already been discovered but registered or patented
under a different name which is Nitroponol. The chemical substance remains the same.
However, due to the expiry of the patent in some countries that is German and France,
Telecan can apply for the patent there. In the UK, the patent has not expired and owners of
Nitropol may prevent Telecan from patenting the compound (Pattinson, 2009).
Since Telecan had only tested TC-025 in a petri dish, could it be said that the invention
had a useful function?
YES.It had a useful function because it’s the testing of TC-025 in the petri dish that gave the
specific results. It therefore had a useful function in the research process because it was tested
severally by Jane to see if she had done the procedures wrongly or if the mixture wasn’t
perfect.
Did Jane’s previous work in her M.Sc. somehow make her subsequent finding
“obvious” and thus lacking in “ingenuity”?
NO. although during her previous work in her M.Sc the use of nitrogen containing
heterocyclic compound produced obvious results on uveal melanoma, the research was not
lacking ingenuity (Mueller, n.d.).

LAW
References
Amani, B. (2016). State agency and the patenting of life in international law. London:
Routledge.
Eiland, M. (2009). Patenting traditional medicine. Munich: Nomos Verlag.
Halbert, D. (2005). Resisting intellectual property law. New York: Routledge.
Mueller, J. Patent law.
Pattinson, S. (2009). Medical law and ethics. London: Sweet & Maxwell.