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Protecting Intellectual Property for Scientists

 

Nathan Boutin, Associate Editor

February 2022


Recently, there has been increasing demand among researchers to take ownership of their intellectual property (IP) and develop technology that has real-world applications. Scientists want to realize the full potential of their creations, but innovation can be stifled by both a lack of capital and conflict from third parties. One solution is to create start-ups and other entrepreneurial ventures to attract investors, which helps further the research of the product and kickstarts its development. The only way to do this without running into legal trouble is to secure patents, which ultimately lie at the intersection between scientists and entrepreneurial ambitions.

However, applying for and successfully being granted a patent can be a confusing process to navigate. Where does one begin?

Creating a solution to a problem

The process starts with either a problem or solution. Researchers may happen across a unique innovation during their research and then wonder if it can be patented. This is starting with a solution. In this case, the scientist works backwards to figure out how the novel idea can be applied in the world. In contrast, finding a problem that needs to be solved and then creating technology around that problem is a more direct method of developing a patentable invention. Since the idea was created with a specific use case in mind, then the IP possesses certain value.

Before anything, though, it is important to conduct a patent search. This ensures that the innovation has not yet been patented and can save many, many hours of fruitless labor. The good news is that online patent databases are easier to access than ever before. Google Patents is a great preliminary search engine. A more in-depth approach is viewing international patent databases, such the United States Patent and Trademark Office and the European Patent Office. Using proper keywords related to the proposed invention is vital to finding relevant patents, so be sure to use a wide scope of search terms. Searching through these databases will provide knowledge about what solutions are currently on the market and where the space for innovation begins.

Similarly, keeping on top of current innovations in the field and learning about avant-garde research avenues is a great way to understand where there is room for improvement. Thus, cultivating fruitful professional relationships can help pave the way for innovative technologies.

Determining whether an invention is patentable

Once the invention has been developed, a patent application can be filled out. But what constitutes patentability? This question is rather difficult to answer because the criteria are broad and unspecific. There are a few basic concepts to determine if something can be considered IP and is worthy of a patent.
First, the invention must be new. In other words, if the characteristics of the invention are detailed in the current body of literature, then it is considered unpatentable. This can create some conflict with publishing research. There is often a sense of urgency when a discovery is made, spurring researchers to swiftly publish their work in a peer-reviewed journal. While novelty in published data is a great way to earn credibility and disperse knowledge, premature publication may hurt the chances of patenting the researcher’s IP. When research is published without patent, the window is open for others to improve upon the original idea and scoop up the IP. The United States provides a one-year grace period from the initial public disclosure of the IP to file a patent application, but this is only applicable for researchers in the United States and still allows competitors to file for a patent first. Thus, if researchers have any thought of engaging in business ventures to attract funding and solve real-world problems, it is advised to patent before publishing, holding conferences, or otherwise disseminating the IP.
Second, the invention must be nonobvious, meaning that the invention must not be obvious to a person having ordinary skill in the field. This can be interpreted in many ways, and each patent reviewer may have their own opinion of what constitutes obviousness. However, the general consensus is that “discoveries” requiring minimal thought or development are not eligible for patents; this rule is to avoid patents for every simple innovative process.
Third, the patented material must be sufficiently reproducible to a skilled individual in the field and have industrial applications (i.e., utility). Hence, patents usually present specific steps to recreate the material and provide data to demonstrate the invention’s effectiveness.
Finally, the patent application should address possible variations of the IP to discourage “knockoffs” or generic competition. For example, software patents may wish to discuss alternate formulations and solutions to the proposed technical challenges. By using specific language about how the technology achieves certain goals, the innovation can avoid being labeled as merely an abstract idea.

Other strategies

There are many resources from colleagues to mentors that can help with protecting IP. One of these resources is technology licensing officers, who are often part of large universities and act as a liaison between the budding entrepreneurial scientist and the patent office. These officers specialize in managing portfolios of university-led inventions and can be invaluable to have on one’s side to interpret patent law and policies. Seeking help early on and providing as much information as possible to a technology licensing officer will be valuable for the entire process.

Joining a team of scientists with entrepreneurial goals in mind may also prove beneficial. With the goal of developing a start-up, members of the team can work to find potential clients and perform market research. Other members might determine the reliability and scalability of the invention, while others might write applications and handle communication. Sharing the workload and playing to each individual’s strength is always a good strategy, but this will also entail sharing the IP.

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