Questions and Answers on Patent Law for Academic Research Scientists

Questions and Answers
on Patent Law for Academic Research Scientists

by Edward R. Gates, E. Robin Plumer, Michael J. Twomey

What is a patent?

A patent is both a disclosure of an invention to the public and an exclusive right to the invention for a term of years.In essence, the government grants the inventor exclusive rights to the invention in exchange for a full disclosure of the very best way known to the inventor of making and using the invention.When the term of the patent expires, the inventor’s exclusive rights are lost but the disclosure remains forever with the public.

The patent right is specified in Article I of the U.S.Constitution, and its purpose is to “promote the Progress of Science and useful Arts.”Thomas Jefferson (the first “Commissioner of Patents”) and the other founders believed that society is best served when creative minds are provided incentive to invent, provided the incentive does not stifle the creative efforts of others.For over two hundred years, the United States patent system has evolved and adapted to maintain this balance.

Why patent something?Isn’t society better served if I publish my research and dedicate it to the public?

The answer to these questions is perhaps counter-intuitive.Experience reveals that if you dedicate your inventions to the public, then chances are your inventions will never find their way into public use.You will have removed the incentive for a commercial entity to make the investment necessary to bring your ideas to practical fruition and into public use.Even after you have demonstrated that your invention works, hundreds of thousands of dollars in product testing and development, production engineering and marketing still may be required before it is available to and accepted by the public.Without the limited period of commercial exclusivity provided by a patent, no company will have the incentive to make these investments and bring the invention from your laboratory into public use.

Will obtaining a patent stop others from doing academic research about the same subject matter?

No.Research on that subject matter for strictly academic purposes is not an act of infringement.The patent laws are aimed at preventing infringement in a commercial context.Academic and other research institutions, generally speaking, remain free to build upon patented advances.

Is there any other reason for patenting something?

Yes.At a time when government funding for research is tight and talented investigators spend more and more time filing grant applications, and less and less time in the lab, a successfully licensed patent can provide a new and useful invention or discovery to the public, while also providing a source of income to the laboratory and institution that developed it.In this way, more resources will be available for laboratory equipment and salaries to aid successful researchers in their traditional roles as scientists and educators.

There are, of course, personal economic incentives too.Your ability to attract funding will determine what you can accomplish.A track record of patented inventions which have been licensed to industry can increase the likelihood of obtaining sponsored research, which may be necessary to achieve your research goals.Most universities share with inventors the income generated through the licensing of inventions.Such policies allow faculty members to capitalize on the value of their creativity without having to leave the university for industry.

There are intangible benefits too.It is satisfying to see the ideas generated from your labor put into use for the benefit of the public.You have the power to affect the quality of people’s lives, and perhaps even life itself.

Who owns the patent?

Your state laws and particular employment circumstances must be considered.In most states, inventors own their inventions unless they give their rights away by contract or as a result of being employed to invent.Most academic institutions require their faculty to assign inventions to the institution if the invention involved the substantial use of the institution’s resources (such as expensive laboratory equipment).In return, such institutions typically commit resources to patent and license the inventions and share any income from the inventions with the inventors and the inventors’ laboratory or department.

Can you patent an invention even if the development of the invention was financed by federal funds?

Yes.In 1980, Congress passed a law that allows institutions to own inventions made by their faculty but financed with public funds.The federal government passed this law to provide an incentive to transfer technology from government supported research to the public and to permit the citizens of the United States (which funds more research than Japan, France, Britain and Germany combined) to pursue the fruits of that research.

What is the standard for patentability?

Utility
Your invention must be useful.This requirement focuses on the difference between a “discovery” and an “invention.”It is a discovery to realize that hydrogen gas is generated when an electric current is passed through water.It becomes a patentable invention when that discovery is harnessed in a method for the production and collection of hydrogen gas from water.It is a discovery to observe and characterize a tissue response to a subcutaneous implant.It is an invention to include in the implant a substance which favorably influences such a tissue response to affect drug release from the implant. 
Novelty
Your invention must be different from that which already is publicly known or available. 
Nonobviousness
Your invention must not have been, at the time of the invention, obvious to a person of “ordinary skill” in your field.The requirement of “nonobviousness” is anything but straightforward.Inventors tend to believe that everything that they do is “obvious.”Inventions often seem obvious in hindsight.An invention which solves a problem probably is not obvious if others attempted to solve the problem but failed.A good case can be made if your invention yields surprising, unexpected results.Factors happening years after your invention also can influence the determination of nonobviousness, such as the commercial success of the invention or copying of the invention by others.Self-censoring can cause you to lose valuable rights.Seek help from your institution’s licensing office to assess nonobviousness. 

What kinds of things are patentable?

There are four all-encompassing categories of patentable “subject matter”: processes, compositions, articles produced by manufacturing and machines of practically any type.If you have something new, useful and nonobvious, it usually can be placed into one or more of these categories.Here are some typical examples:

  • New compounds or materials  
  • New uses for old compounds  
  • Isolated or purified natural compounds  
  • New formulations or mixtures  
  • Transgenic nonhuman animals or plants  
  • Methods of producing new compounds or materials  
  • New methods of producing old compounds or materials  
  • New methods of producing or derivatizing surfaces  
  • New instruments, tools or accessories  
  • Software or other algorithms  
  • Signal processing  
  • Control systems  

Who is an inventor?Are inventors the same as co-authors?

Whether you are an inventor is a complex legal question.To be an inventor, you must contribute more than routine engineering skills to the conception and/or reduction to practice of an invention.Conception is the formation in your mind of a definite idea of the invention and an operative means for making and using it.The reduction to practice is the successful building of an operative embodiment of the invention.

Co-authors are not necessarily inventors.Inventorship is a higher standard.It is a legal judgment that should be addressed with a patent attorney.If inventorship is deliberately misrepresented in a patent, then all rights can be lost.

What if I have a collaborator at a different institution?Does that affect the process?

The process is affected if the collaborator is a co-inventor.Patent applications are filed in the name of the inventors, and unless there is an agreement otherwise, co-inventors are entitled to an equal and undivided interest in their patents.If a collaborator is a co-inventor, then the collaborator (and the collaborator’s institution) will have to be consulted by your licensing office when the patent application is being prepared.

Will filing a patent application prevent me from publishing or otherwise disclosing my research?

Absolutely not.Your academic institution requires that you disclose your research, and there is no need whatsoever for the scientific community to alter the age-old free exchange of ideas.But if you want patent protection worldwide, then you must file your patent application before you publish or otherwise publicly disclose your invention in enough detail to reproduce it.All that is necessary is that a patent attorney be provided with ample time to review your description of the invention and prepare an application so that it may be filed either before or simultaneously with the public disclosure.If a patent attorney is contacted at the time of the preparation of a first draft of a manuscript or abstract, or at least a few weeks before an oral presentation at a scientific conference, there should be ample time to prepare and file a patent application.

What is considered to be a public disclosure that might bar obtaining a patent?

In many countries, a patent application cannot be filed after a public disclosure of the invention which describes the invention in enough detail to reproduce it.A scholarly paper is certainly a public disclosure.Other writings and even oral presentations may be public disclosures too.For some countries, a nonconfidential disclosure of your invention to even a single individual can be a bar to obtaining a patent.When in doubt, contact your licensing office in advance of any such publication or oral presentation.

The following examples may be instructive:

Is a grant application a public disclosure?
Grant applications typically are not made public, although the abstract of the grant application can become public and should be tailored so as to avoid a disclosure which would allow someone to reproduce the invention.Grant final reports, on the other hand, can be available to the public and can be disclosures that would bar obtaining a patent. 
What about a departmental seminar?
If the seminar truly is limited to the members of the department, then chances are it is not a disclosure that would be a bar to obtaining a patent.In such an instance, the confidentiality of the presentation within the department may be assumed.It certainly would come as a shock to those making such presentations if the content of the presentation were published by someone attending the seminar.If, however, the seminar is open to the public, then disclosure of your invention could be a bar to obtaining protection in some countries, including most European countries. 
What about a biological deposit, for example, at the ATCC, or a sequence deposit, for example at GenBank?
A biological or sequence deposit can be a disclosure of your invention if the deposit is unrestricted.You should be aware that deposits can be made with the restriction that the information not be made available to the public until the day on which your research is published in a journal. 

What if I publish or talk about my invention prior to filing a patent application?Is all lost?

Not necessarily.The answer varies from country to country.For a United States patent, you are given a one year grace period from the time of your first public disclosure until the time when you have to file a patent application.For a European patent the rules are draconian.The disclosure of the essence of your invention to even a single individual anywhere in the world on a non-confidential basis is a bar to obtaining a patent in Europe if that disclosure occurs prior to filing the patent application.For patents in other countries, the rules vary between these extremes.Before assuming that your rights are lost or before risking your rights by disclosure, contact your institution’s licensing office.

How much experimental evidence is needed before I can file a patent application?

None.There is no requirement that experimental evidence or working models of your invention be included in your patent application.”Prophetic” patents are routinely granted for inventions that have yet to be tested, provided that certain requirements are met.The principal requirement is that your patent application contain a sufficient written description of your invention to allow a scientist of ordinary skill in your scientific discipline to make your invention and use it for its intended purpose (the “enablement requirement”).

Prophetic patent applications are often challenged on two grounds.The Patent Office Examiner may contend that the written description is insufficient because carrying out the invention would require “undue experimentation” by others (no “enablement”).The Examiner also may contend that your prophetic invention does not work (no “utility”).Evidence proving that one of ordinary skill in the art could readily practice your invention without undue experimentation and that your invention works can be provided to the Patent Office years after the application is filed.

Will preparing a patent application take a substantial amount of my time?

It shouldn’t.Your role is to provide a description of your invention and relevant background information (“prior art”) and to critically review the patent application prepared for you.It is a patent attorney’s responsibility to quickly assimilate the information that you provide, to define your invention in a manner which distinguishes it from the prior art, to prepare an application which fully supports the asserted utility of your invention and to work with you to be certain that the application fully describes every aspect of your invention.

Without taking the time to learn U.S. and foreign patent laws, how do I avoid jeopardizing my patent rights?

Simple.If you think you have an idea that may be patentable, contact your institution’s licensing office as soon as possible and stay in touch with it on a timely basis about potential public disclosures of your idea.The licensing office will work with you to give you the advice that you need so that you can protect your inventions without interrupting your primary activities as a research scientist.