Sometimes, during research, we come up with or stumble upon something that is not only unique, interesting and scientifically important, but also has possible commercial viability. The question you might then ask is, “Can I patent it?” In other words, “Can I legally protect the intellectual property that I have created so that I have exclusive rights to pursue it for financial gain?” and “If I patent something, what rights will that grant?”
Unless you have already gone through the patent process you likely don’t have answers to these questions. Recently, a patent attorney – Jeremy Stipkala Ph.D., J.D., who has his own legal practice called Stipkala Law – visited the Meyer research group to help answer these questions. Jeremy received his Ph.D. in chemistry from Johns Hopkins University and then went on to get his J.D. from George Washington University Law School. His expertise allows him to share insight into the patent process from both a scientific and a legal perspective. He gave us a straight forward handout to provide some insight into the patent process. With his permission, I am now sharing this handout with you.
I have heard (not from Jeremy) several additional suggestions, tips and factoids relating to patents. I would like to share them with you:
- It is important to perform a cost-benefit analysis before pursuing a patent. Only a small percentage of patented ideas ever become commercially available and even a smaller percentage make money. The process of obtaining a defensible patent (explained in greater detail below) can be expensive ($25,000-30,000 in the US). Unless your potential return on investment is high, it might not be worth pursuing a patent.
- Getting a patent is the relatively easy part of the process (for example, a number of physically impossible patents have been issued over the years). The real test of a patent is whether or not it’s defensible – i.e. will you win if a competing company decides to challenge your patent in court? The strength of you patent rests on a combination of how well the patent is written and your record of invention (your lab notebook). In this instance, a well-kept lab notebook can literally be the difference between millions of dollars and nothing.
- Try to avoid unnecessary commentary about the patent in email correspondences. If the patent is challenged in court, your email record could be used as evidence. For example, if you include comments like “I don’t think we can patent this idea.” the challengers could argue that you didn’t even support your own patent.
-The protection of intellectual property is covered in the United States Constitution in what is known as the Copyright Clause (Article I, Section 8, Clause 8). This says:
“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
-Prior to 1980, any intellectual property produced from government-funded research in the United States was the property of the government. Under these rules the government accumulated 28,000 patents. Some argued that government ownership of these patents stifled the financial incentive for federally-funded researchers to create businesses. The passage of the Bayh-Dole Act in 1980 was an attempt to remedy this possible short-coming. One of the greatest impacts of the Bayh-Dole act was that U.S. universities, small businesses and non-profit organizations could own intellectual property created under federally-funded research (with several qualifiers). This is the reason many professors have created their own companies.
-One interesting provision of the Bayh-Dole act is that it grants the government march-in rights. Despite the intellectual property being owned by the original applicant, the march-in right allows funding agencies to basically ignore the exclusivity of the patent and grant a license to others in special circumstances. While no federal agency has yet exercised march-in rights, it is something to be aware of.
-There are two different policies that govern who can claim ownership of intellectual property: first-to-invent and first-to-file. Under the first-to-invent rule, the person who can prove they came up with an idea first is the owner, regardless of who obtained the patent first (This decision is usually based on the first written record of the idea). Under a first-to-file policy it does not matter who came up with the idea first, only who filed the patent application first. Currently, the United States is one of a few countries that practice the first-to-invent rule. However, starting on March 16th, 2013 the US will change to a first-to-file policy thanks to the passage of Leahy-Smith America Invents Act. Hopefully, this law will simplify the patent process and reduce the amount of time spent in court trying to prove who was the first-to-invent.