kiki
2 August 2010
How difficult is it to get a patent?
Posted in applied researchIn our research and development works, we often get some results which are creative with potentially practical value. At this time, it is great to apply for a patent. However, the whole procedure of a patent application is relatively complicated, compared to an academic paper submission.
For example, the procedure of a US patent application is not only complex but also time consuming. Reasons are as below,
At first, it’ll take a long time to prepare the documents and support lawyers to modify the original patent draft to be a formal format. All contents of the patent will be fractionized as much detail as possible. Every claim is described with detailed and indirect words. The purpose is to make people repeat the invention after the protection period of the patent being over. However, this kind of description is too hard to understand, even for the inventors themselves. On the other side, every claim of a patent will cover a scope of claim items. The difficulty is to define a suitable scope for claims. It cannot be too broad to cover all similar things, and not too narrow to a single item. And so can the invention be protected in a suitable and acceptable range.
After the application is submitted to USPTO, there’s a period for examination. If there’s somebody to reject/question with some reference materials, inventors should response with satisfied proofs again and again, until all explanations are accepted. During this examination, claims of the patent might be cancelled or modified. This period is long, maybe 5 years are needed. Sometimes will it make the inventors be frustrated, especially for those who have terminated the studies in that area. This long and complicated procedure make it hard to get a patent.
Follow
2 Aug 2010 13:43, Vitaliy
Due to all these issues (not mentioning time loss), third party (patent attorney) are used very often. The same should be in Universities. Authors should fill in only ideas and attorneys will do the rest. That is easy for author, but it costs money for University.
From another side, even very experienced scientist will not produce good patent due to absence of specific knowledge.
9 Aug 2010 16:41, How to Get Into Grad School
There are a lot of books available on writing effective patents. But typically, the institution or corporation will have specialists for securing patents, which it will then profit from.
10 Aug 2010 23:47, Otto Muskens
To my experience, the major bottleneck of getting a patent in academia is the question who wants to pay for it. Universities by themselves are unlikely to cover all the costs of a patent if there is not a concrete prospect for licencing of the technology. In fundamental research, it is usually too early to have an industrial partner by the time you want to patent and/or publish your results. Last summer I spent some time writing a patent application, only to encounter exactly this problem, that nobody wanted to cover the costs irrespective of the quality of the idea (or I hope).
However, a publication does not have to kill a patent application as long as it is carefully formulated, for example by removing reference to the possible applications of your idea. However one time we did this, after which the referee got back to us by criticising that our work did not have any applications since even the authors could not name any.
12 Aug 2010 19:12, Mirjam
Ah, a lot of interesting issues regarding patents I think. Maybe the most interesting question is what is ethical to patent and what is not, especially in the field of biotech and pharmaceutics. Surprised that a company can patent a particular gene? Other question: what does a university researcher want to achieve by filing a patent? Get money from licensing? Sell his/her research to funding agencies as applied? Spice up the CV? It is probably fair that a university only wants to finance the procedure if there is a good prospect for applications, in the sense that it really should be useful for something in the not too far away future (even if it can not be done just yet); I think the requirement to already have an industrial partner is too restrictive. Note, by the way, that for a patent to be granted the invention does not need to have a ‘real’ (useful) application, it just needs to be ‘realizable’, i.e. I can invent a rather useless machine, but as long as it does not defy the laws of nature it can be patented. In this sense a patent on one’s CV does not necessarily mean his/her research is of practical relevance for society. When filing a patent one should also decide what countries it will cover. In this respect it is important to know the difference between e.g. the EU and the USA. In the EU you are not allowed to disclose your invention *at all* before you file the application (also not in for instance a talk!); in the USA there is a ‘grace period’ of 1 year before filing, I believe. In this time the inventor is allowed to disclose the invention… In any case: I think things are sufficiently complex to always use the services of a professional.
23 Sep 2010 7:59, Sushil Mujumdar
I am in the middle of one such patent procedure. I wrote up the app in the belief that I got it all ‘correct’, but the attorney enlightened me about patent fundas after he read it. The idea he gave me was that if you want a patent that pays your university off (and one does want that; patents are not meant just to adorn a CV, particularly since it costs a lot of money to get them), you got to satisfy a few criteria from the industry’s viewpoint.
1. The patent should be easily convertible to a product, which is very very hard since the industry’s research there is usually way ahead of academia’s, 2. The patent should border the existing intellectual property involved in a company’s products, 3. It should have potential infringement possibility so that a company can detract its competitors in case required, and things alike.
These ‘economic’ considerations don’t always strike an academic (did not strike me for instance when I wrote it up), so this is where professional support is required. The attorneys should know what is in the scientific result and who will be interested. These services too cost a lot of money.