PRIOR ART

When preparing a patent application, you must investigate relevant prior art, most of which can be identified by searching scientific publications and patents. Not all prior art is accessible, even to a patent attorney or search agency; you will not be able to access patent applications filed during the previous 18 months because they have not yet been published. Nor can you know about scientific manuscripts submitted for publication that have not yet been published. Poster presentations also count as public disclosure but can be very difficult to dig up.

What you can do without money:

• Search relevant scientific literature.
• Identify related patents using online databases.
• Identify companies and academic research groups that are working in this field and read their publications and patents.
• Predict whether these groups are likely to have filed patents or publications before your priority date to which you may not yet have access. Talk to people discretely to gather more information.

What you can do if you have money:

• Hire a patent attorney and/or IP search firm.
• Hire a retired patent examiner to do a prior art search. Your patent attorney can arrange this, likely passing the cost ($500 - $1000) directly to you without additional charges. This search may not be thorough and will likely be limited to US publications.

LOSING PATENT RIGHTS

Researchers are capable of rendering their own inventions unpatentable by disclosing information prior to filing the patent application. Even submitting a manuscript to a journal for review may qualify as public disclosure if that manuscript is circulated to others prior to publication. Starting a clinical trial before filing could also count against you. The United States has a one-year grace period that allows filing for patent protection within one year after the invention has been publicly disclosed. However, no other country is so generous, and disclosing an invention even one day before filing will nullify your international patent rights.

If you patent a technology and list five applications, someone can still patent a sixth application that you had not thought to claim, potentially blocking you from using your technology for this sixth application. However, the other person will also not be able to use your technology for that application without your permission because your patent describes the composition of the technology.

It is a tragedy that many investigators are not aware of the damage that can result from failing to patent. Some investigators, who have no interest in profiting from patent licensing, believe that they are doing society a service by publishing their unpatented discoveries. Others are so focused on the abstract implications of their discoveries that they overlook patentable applications. If significant investment is required to commercialize a novel technology, companies will only want to invest in those opportunities that can be protected from competition. Companies are often apathetic to nonpatented innovation. Consequently, these discoveries may never leave the academic laboratory and may never benefit society. Therefore, a truly generous scientist should file patents and donate them to a company.

RETAINING PATENT RIGHTS

Do not publish or publicly discuss any aspects of a potential invention until you have first spoken with your institution's Technology Licensing Office (TLO). If you do discuss an invention with people outside your laboratory before filing a patent application, have them sign a Confidential Disclosure Agreement (CDA). A template is available at: www.evelexa.com/resources/legal_issues.cfm.

If you have prepared a manuscript for publication and realize at the last minute that some aspect of the discovery may be patentable, contact your TLO immediately. They can file a provisional patent application on very short notice (within hours, even), setting the priority date for your invention. A standard patent application must then be filed within one year of the provisional filing or else the priority date expires.

A provisional application can consist of as little as a cover page attached to a copy of the scientific manuscript describing the invention. Information that enters the public domain after the priority date, including the information contained in your manuscript, will not count as prior art and will not invalidate your patent rights. Once the provisional patent is filed, you will be able to submit your manuscript and present at conferences while putting together a more complete patent application. However, because the priority date only applies to those claims that you state in the provisional application, it is important to make sure that the provisional application mentions all the composition and utility claims that you hope to protect.