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5 Tips for Academic Researchers for Patenting Inventions

5 Tips for Academic Researchers for Patenting Inventions


(July 1, 2011)

What Academic Researchers and Technology Managers Need to Know

You experience many pressures — from pressures to publish, to pressures to keep state and federal regulators happy. In the midst of earning a degree, obtaining tenure, or running a safe and well-funded laboratory, you may have little time to think about how your daily habits can affect your ability to protect the intellectual property your research activities generate. The following list of best practices can help you get the most out of your innovations.

    1. KEEP GOOD RECORDS: Establishing who did what, when, can be just as important in patent law as it is in a tenure file or grant proposal. Lab notebook entries should be complete, accurate, and made soon after an experiment is conducted. Entries should also be dated and signed by a person who understands the work but did not conduct the experiment herself. Sloppy record keeping can result in the attribution of a researcher’s insights (and patent rights) to somebody else.
    2. FILE FIRST: It is almost always better to file a patent application before publishing a manuscript, presenting a poster, or giving a talk about a new technology. Making a public disclosure before filing an application can result in a permanent loss of patent rights in the United States and abroad. Filing first is especially important for preserving foreign patent rights and is likely to become more important in the U.S. as well. For example, in most foreign jurisdictions publishing research results before filing a patent application destroys legal novelty and thereby precludes the possibility of ever obtaining patent protection. If a public disclosure is imminent, a call should be placed to the research institution’s technology management office or patent attorney as soon as possible to avoid forfeiting rights.
    3. TALK TO A PATENT ATTORNEY EARLY AND OFTEN: Patent applications are both technical and legal documents and therefore should be drafted by a licensed patent attorney or agent who understands the technology. It is far too easy for an unqualified person to make mistakes that drastically curtail or destroy patent rights. To be most helpful, patent attorneys need to know as much as possible about their clients’ research and publication plans as soon as possible. Researchers who publish and patent frequently might consider scheduling a regular meeting with their patent attorney to discuss the status of their lab’s intellectual property.
    4. DISCLOSE THE RIGHT AMOUNT OF INFORMATION: As emphasized above, it is generally best for inventors to disclose everything to their patent attorney right away. But more care should be taken regarding what ideas are disclosed to the public and when. Under-disclosing and over-disclosing can both be harmful to inventors’ rights. In exchange for patent protection, inventors are required to fully disclose their claimed inventions to the Patent Office. But inventors are not required to disclose innovations they are not claiming, nor do they need to disclose the seeds of future inventions before those seeds have borne fruit. Researchers should work closely with their patent attorneys to ensure proper development of their patent portfolios.
    5. FULLY ENGAGE IN THE PROCESS: The best patent applications result when inventors work closely with their patent attorney and fully engage in the patenting process. It may be difficult for many researchers to find extra time in a busy schedule, but carefully reading drafts, asking questions, and providing thoughtful feedback pay large dividends later. Once a patent application is filed, it is too late to correct major misstatements or add new data. Cutting corners on the front end will haunt a patent application and any patent that issues from it for the entire life of the patent and possibly for the lifetime of other related patents as well.

Click here to view the full digital version of the The Innovation edition of SML Perspectives.  

Authors
John P. Zimmer
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