“Intellectual Property has the shelf life of a banana” (Bill Gates). However, as scientists it is important for us to not only publish our ideas and results, but also take ownership and protect the biological materials and technology that have the potential to be built upon, sold, or licensed. The idea of patents can be traced back as early as 500BC in Greece, with “official” patent laws being established in 1474 in Venice, 1624 in England, and the first Patent Act of the U.S. Congress was passed in 1790. However, even with a long and established history, it can still be challenging to navigate the pathway from idea, to product, to patent, and licensing. This connections article provides a general overview of the patent process.
1. What types of ideas are patentable?
Any new discovery, new products, improvements or altered use of existing products, methods or processes, software, compositions of matter (biologicals, compounds, new formulations of known drugs), technology/machines, are all groups of items that can be submitted for patent. However, the invention must be (1) novel, (2) useful, and (3) inventive or non-obvious (going beyond what is already known).
2. Who pays for it?
If you work for an academic institution, your Institution’s Research Technology Transfer/Innovation and Commercialism office will be responsible for covering the expenses, as well as submitting the patent and licensing the rights of the patent. The costs are substantial, and include the provisional patent filing (first 12 months, ~$5000), a patent cooperation treaty application (~18 months ~$15,000) to allow international patent protection, national patent applications (~$10,000-50,000) for each country that you want patent protection, and annual maintenance fees for each of patent. Given the expense of completing and maintaining world-wide patents, if there is no potential licensee, institutions may choose to drop the application or minimize costs (such as by only filing within one country). Any eventual royalties will shared between you and your institution (and funders).
3. What is the first step of the patent process?
The first step is meeting your technology transfer office. However, usually prior to your initial meeting you will need to fill out disclosure forms about your discovery. These serve as legal documentation of the invention and answer questions about what is novel, do you have any ideas of where it will go and if you have any outside groups interested. It will also be important to name all the Inventors as well as their role in the development or idea. Inventorship requires contribution to the development idea, rather than just data acquisition, and can be legally challenged so it should be carefully considered. It’s also important to have any data, papers, grants, drawings, photos etc. that show the novelty and/or use of your invention available in advance of your meeting.
4. What happens during an initial meeting with your technology transfer office?
In the initial meeting, you will go through the invention so that the technology transfer office better understands the invention. It also provides the opportunity for you to ask questions about the potential patent process, the ability of the invention to be patented etc. The more information/data you have available and can describe (both in layman and scientific terms), the better the invention can be evaluated.
Given the importance on novelty and inventiveness, one of the early steps in the process a search of the “prior art”, or what is known at the time of invention. It is important to be able to show that nothing currently available is similar and that “someone skilled in the art” could not have made the same discovery. You will also need to be able to show “reduction in practice” which means you have to show how the invention (e.g. drug) works in a specific rather than general manner. Related to novelty, it is important to consider your presentation of the idea to the public such as thesis defenses, talks at other institutions or conference, or anything discoverable outside of the university). Such disclosure may count as prior art and invalidate the patent. The culmination of this information gives the institution an opportunity to determine if the idea is novel, if there is “prior art”, if it has the potential for licensing and the wording require to both describe, and protect, the invention as best as possible. If your idea is novel, useful, and inventive, and the technology transfer office believes the patent will be profitable, then a provisional patent filing will be the next step.
5.What happens after the initial filing?
After the initial meetings and paperwork, a provisional (in order to claim the invention but have more time to add information about it) or non-provisional (where all information must be finalized and cannot be altered and will then be examined by U.S. patent office) patent can be filed. In some countries (such as the US), you have 12-months from the initial provisional patent filing date to add data to the application before filing the non-provisional patent and the patent cooperation treaty. However, in some other countries (EU, China etc.) there is no grace period. Institutions may file provisional applications prior to any disclosure and then re-evaluate 12-months later before the next, more expensive, steps of the process.
6. How long does patent protection last?
The most common type of patent filed in the United States is the utility patent making up 90% of patents. This type of patent last for up to 20 years, although in a few situations this can be extended. Utility patents protect the utility or functional aspects of an invention and can include machines, processes, methods, compositions and anything made that has a benefit, use capability and specific function. It’s worth remembering that annual maintenance fees are required throughout the life of the patent in order to keep the patent active.
In summary, as with most parts of science it is important to document your work as best you can. If you have a patentable invention, it is important to meet with your technology transfer office early on and before any public disclosure of your findings.