We all get excited about doing scientific or engineering research for different reasons, but most of us seek the thrill of creating something entirely new. In this way, research can be just as wonderful as the creative arts. Publishing your new ideas is great for sharing information with the world, but sometimes you want to sell your ideas too. This is where filing for a patent can be very useful. I have some experience in this area as I have patented inventions on my own, in industry, and most recently in academia.
Because I can’t cover the entire topic of Intellectual Property (IP) law in a single blog post, I will choose instead to answer questions that someone might have if they were interested in patenting at a company or university. I hope other researchers and inventors like myself will find this information useful. Also, I am not a patent attorney, so please don’t take anything that I say here as legal advice!
What is a patent?
In case you don’t already know, a patent on a specific idea gives exclusive usage rights of that idea to whoever holds the patent. In theory, this means that the patent holder can prevent others from using the idea. The person who creates the invention is referred to as the inventor, and the person or organization who holds the patent is the assignee. A patent can be used to make money in a number of ways:
Making and selling products or services with the patented idea
Selling the patent to another organization
Licensing out the patent in exchange for a percentage of sales
Suing for the profits made by an organization who used the patented ideas without your permission
What can be patented?
While patenting restrictions vary between countries and over time, most countries agree that a patentable idea must have all of the following properties:
Mathematical formulas and pure algorithms may be amazing, but these abstract ideas are not considered to be patentable. Which ideas are abstract can be controversial, and so there are many examples of courts invalidating patents after they were issued due to disagreements on this issue.
Natural laws and natural phenomena are also not patentable. One of the most prominent examples of a patent portfolio being invalidated for being natural is the case against Myriad Genetics who previously held a patent on breast cancer genes.
Similar to a publication in a research conference or journal, patentable ideas must be significantly different from what has been published in the past. Academics usually refer to existing publications as “related work”, while patent attorneys refer to them as “prior art”.
This is by far the easiest requirement to meet. All that you need to demonstrate is that your idea successfully accomplishes some goal. That goal need not be considered useful by a majority of people, it just needs to be possible and legal. There are all kinds of hilarious patents with dubious usefulness that got approved by the US patent office.
Every field of engineering and design has a certain set of common knowledge that an expert in the field would be familiar with. If such an expert would find an idea to be obvious or common knowledge, then that idea is considered to be “obvious”. This is often a subjective judgement, so see here for further discussion.
Why should I bother patenting if I’m not the assignee?
Most companies and universities require that you sign some form of a Confidential Information and Inventions Assignment Agreement (CIIAA) before you join them. The specifics of each CIIAA vary, but most force you to give your assignee rights to your employer for all inventions that you create while employed by them. This means that if you invent something new while employed, only your employer can file for a patent on this invention. It is important to remember however that your employer still needs you to perform your duties as inventor (disclosing your invention and explaining how it works to the attorneys), so companies and universities usually provide inventor incentives.
Incentives in industry
First of all, while you do give up your assignee rights while employed you never give up your inventorship. This means that if you file a patent with your organization then you will still get credit for creating the idea even if you don’t own it. This can be a great option to get your name out there if your organization prohibits publishing but encourages patenting. Second, companies will often provide cash bonuses to you if your invention disclosure gets approved for filing and/or if a patent is issued for an invention of yours.
Incentives in academia
Beyond being self employed or in a startup incubator, academia is the best work environment to build intellectual property in. A university’s goal is to launch your career rather than make large profits, and as such they usually give you some amount of profits from and control over your inventions. While every research university is different, it is not uncommon for there to be a preference to licence patents to inventors themselves if they choose to start a company. Most universities also give a share of any profits to the inventors. For example, Cornell allocates a third of patent profits to the inventor(s).
Can I patent on my own?
As long as you aren’t under a CIIAA then yes, you can patent on your own. Fees from the patent office will be reduced because you as a person are a “micro entity”, but the cost of hiring a skilled patent attorney may be significant. The best bet for individual inventors (and sometimes even organizations) is to first file for a provisional patent application.
Should I file a provisional patent application?
A provisional patent application will not be reviewed by the patent office and will not become a patent without further applications, but it serves the all important function of setting the filing date. A lot of work goes into building the claims in a formal patent application, and so the provisional application provides a way to set the date of filing before time has been spent on developing claims. Even skilled patent attorneys will often suggest filing a provisional patent application before continuing to the claims. Provisional applications are also very low cost as their fees are much smaller than that of a full application. This makes them a good option for individual or small patent applicants who haven’t yet raised funds for a patent attorney. Keep in mind though that a provisional application only holds power for a year unless a full patent application has been filed in that time.
When should I file?
In a phrase: As Soon As Possible. You might remember being told in school that you should date every single entry in your lab/design notebook. That was because at the time (pre-2013) the US had a “first-to-invent” patenting system. If someone else was to file for a patent that you had invented first (as proven by your dated lab notebook), the other person’s patent would be invalidated. This is no longer the case however as the US has changed to “first-inventor-to-file”. With this in mind, if you want to patent an invention in the US or any other “first-to-file” country you must file as soon after creating the invention as possible to prevent others from filing before you.
Another consideration is when to patent in relationship to publishing. In a university your main priority as a researcher is usually to publish your work. Some may think that this precludes you from patenting your work as well, but this isn’t true! While some countries do prevent you from patenting after publishing your work, the US allows a one-year grace period. A much better strategy of course is to file a patent application before you publish. Thankfully, most conferences and journals enforce confidentiality on submissions, meaning that simply submitting your work for publication doesn’t count as publication. So, if you verify that your publication venue supports submission confidentiality then you can begin filing for your patent immediately after finishing your submission.
Is my invention better protected as a patent or trade secret?
Before patenting, there was very little monetary incentive to publish new inventions. Keeping your inventions a secret ensured that no one else could use them. If no one is sharing ideas then it is very hard for a society to progress technologically. Patenting was proposed as a bargain with inventors: publish exactly how your inventions work in exchange for the right to prevent others from using those inventions for a set time period.
While patenting makes sense in theory, there have been many issues with our implementation of the system. One such issue is that it can be quite hard to prove that someone is using your invention. Closed source software is a perfect example of this as the actual written code is obfuscated by the compilation process. Without the ability to prove that someone is violating your patent, the patent is useless. Also, publishing your invention via the patenting process could provide others with enough information to design around you. Your patent attorney will try to make your patent’s claims as general as possible, but clever engineers may be able to create a new system without violating your claims that still gets the same benefit. So, before patenting your invention consider that your competitors may either hide their use of your patent or circumvent it through clever design.
Is there such a thing as an international patent?
Nope! At least at the time of writing there is no such thing as an international patent or patent office. There is however an International Patent Cooperation Union which facilitates a single patent filing system for all member countries. While no patent is granted through such an application, it does provide a unified system for filing dates and applicants are provided with some written opinions about the patentability of the invention.
The Invention Disclosure Form (IDF)
Lets say that after reading all of this you are convinced that you have a great invention that would be well protected by a patent. Congratulations! If you are in a company or university your next step is to fill out and submit an Invention Disclosure Form. This process can be complex in and of itself, and so I have written about it in its own separate blog post. Click here if you’d like to read on!