Confusion around various elements of intellectual property abound for all industries. However, when it comes to the pharmaceutical industry, queries such as whether trademarks and patents are equally important and whether you should file for a patent or a trademark (or both) are particularly common.
While all potential brands face similar challenges in terms of development and trademark registration, there are several unique issues facing those developing new brands in the pharmaceutical sector. The differences in the regulation that govern the marketing and selling of drugs mean that many of the traditional strategies used to market consumer goods are not acceptable in some areas of the pharmaceutical and healthcare industry.
What Is the Difference Between a Patent and a Trademark?
There are several different types of intellectual property protection available for pharmaceutical brands. However, the most common types of IP protection utilized in the Pharma industry today are patents and trademarks.
What Is a Patent and How Long Does It Last?
Patents are a right granted to an inventor that allows them to exclude all others from making, using, or selling their invention. It generally lasts for 20 years (from the filing date of the application). In the United States, the U.S. Patent and Trademark Office (USPTO) reviews and approves all patent applications. Having a patent provides you with legal protection against third parties who might wish to copy or steal your idea. Generally speaking, patent rights are private rights, and their enforcement is limited to civil suits brought by their private holders.
A patent can be a very valuable asset. According to the World Intellectual Property Organization (WIPO) website: “The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain; that is, anyone can commercially exploit the invention without infringing the patent.”
A pharmaceutical patent can be particularly valuable. Pharma companies developing new drugs obtain patents to protect their investments. However, once qualifying conditions are met, a patent has a comparatively short shelf life of 20 years. It’s a common misconception that the clock on a patent only starts ticking once the drug hits the market. In reality, a patent can be in force for years before a pharmaceutical company can begin commoditizing its creation. In different regions, there are different strategies that can be employed to extend or compensate for this, but it is a complex matter. Like all areas of intellectual property law, legal advice should be sought from a qualified professional.
What Is a Trademark and How Long Does It Last?
Trademarks afford protection to the words, phrases, symbols, logos, or other devices used to identify a person or organization as the source of specific goods or services. This legal protection also prevents the same marks from being used by competitors. The term of trademark registration can vary depending on jurisdiction but is usually ten years and can be renewed indefinitely on payment of additional fees. Trademark rights are private rights and protection is enforced through court orders. Trademark rights can be easily identified by the public and other third parties by the consistent use of the ™ or ®️ symbol placed immediately after the brand name on all marketing and sales materials by the brand owner.
What Is the Difference Between TM and ®️?
The TM symbol can generally be used by any person or business to indicate that a particular word, phrase, or logo is intended to serve as an identifier for the source of that product or service. You do not have to have registered a trademark to use it and many companies will opt to use the ™ symbol for new goods or services in advance of and during the application process.
The ®️ symbol indicates that this word, phrase or logo is a registered trademark for the product or service. The ®️ symbol must only be used in the case of registered trademarks and by the owner or licensee. It also must only be used in the regions in which you possess a valid trademark registration.
How Do I Trademark a Pharmaceutical Brand?
While all potential trademarks face similar challenges in terms of development and registration, there are several unique issues facing those pharmaceutical brands that want to protect themselves with a trademark, especially with regard to Nice Class 5 (Pharmaceuticals and Medical Supplies). The clearance and protection of pharmaceutical trademarks can be challenging because not only do brand owners and IP professionals have to create a completely distinctive brand name, but they often also have to guard against counterfeiting, trademark infringement, and passing-off attempts.
The naming stage of any new brand project always begins with a long list of potential names, which is scaled down to more manageable proportions by a variety of methods, including invaluable screening and full trademark search tools.
Corsearch Pharma clients get access to a full set of pharma in use data and clinical trials (including IMS Health, POCA (FDA), INN, USAN, and pre-stems data) when screening their drug candidates — as well as the opportunity to use our Pharma Investigative Tools that enable you to add research and content from pharma-industry sites directly to your screening report (including from ClinicalTrials.gov, Drugs.com, OrangeBook, Walgreens.com, EMA, Vidal, Martindale, and Rote Liste).
Corsearch’s expert-led comprehensive trademark clearance searches enable you to greenlight your final drug names with confidence. Our research into your final-candidate names integrates global trademark registry data with name safety, US FDA POCA rankings, PDUFA and RX Norm sources, to give you the utmost confidence that all potential conflicts have been identified and flagged for your final review.
In the pharmaceutical industry, the process is very intensive due to industry and regulatory considerations. Here is a short list of steps you can take with the guidance and support of an IP professional or trademark attorney to help you to achieve successful pharmaceutical trademark registration:
- List and prioritize your potential trademark candidates
- Preliminary trademark search (exact match and semi-exact match searches)
- Full trademark clearance similarity search (to identify the similarity risk of your candidate to existing trademark names) to ensure you proceed with the strongest candidates — the search scope will depend on how much risk the business would like to take
- Utilize a POCA tool to predict possible regulatory aspects
- Filing of your trademark application
- Successful trademark registration!
Learn More About How You Can Protect A Pharmaceutical Brand With a Trademark
From brand establishment to protection, Corsearch Brand Risk and Performance™ solutions are revolutionizing how pharmaceutical companies commercialize and protect their rights today.
Learn more about how Corsearch can help to keep your Pharma brand strong and healthy!