Module 3: What is the patenting process?
How do I protect my invention?
First and foremost it is important to protect your invention by filing an application BEFORE publically disclosing your idea. In many cases, public disclosure can kill your chances of getting a patent. Examples of public disclosure include: poster presentations, thesis presentations, oral presentations, written research papers, grant abstracts, web-page descriptions, e-mail communications, and phone calls with colleagues not employed by your institution. It is important to keep in mind the electronic publication date of documents like meeting abstracts, grant abstracts, paper pre-pub dates. Once an idea is disclosed publically, international patenting will not be possible. Some limited protection in the US may be possible. Consult your technology transfer office prior to disclosure.
Who is an inventor?
- Inventorship is guided by a legal definition. The first individual or group to make an invention that is novel, useful and non-obvious is termed an inventor. And, under US patent law only inventors are permitted to receive a patent on an invention.
- An inventor is one who conceived the invention. An inventor is not someone who reduces the invention to practice, unless conception also occurs during the reduction.
- The process of determining authorship for publications is based on the contribution of each researcher and is usually the result of an internal discussion between the PI and researchers.
- Essentially inventorship is legal while authorship is collegial. This definition outlines a different criteria than what constitutes authorship of a publication.
What does a patent allow me to do?
Patents do not necessarily allow you to practice your invention. Patents allow you to prevent others from practicing your invention. Generally patents provide this protection for a period of 20 years in exchange for sharing your invention, as described in your patent application, with the world. The patent claims outline what exactly is protected. The body of the patent provides further background and support of the patented ideas. There are several types of patent applications including provisional patents (valid for a year), utility patents, design patents and plant patents. Each country has its own patent office and rules.