To patent or not to patent, and if so when?
April 7, 2014 5:47 AM   Subscribe

I am a research student who may have inadvertently invented something commercializable. What do I do now?

I am a research degree student working in an interdisciplinary field of science, combining material science and biology. Like most scientists, my original intent was simply to get published in the highest impact journal possible. However, I recently had lunch with an aspiring entrepreneur friend who pointed out that if the idea actually worked, it could be highly lucrative and the basis of a research-based company. He suggested that I immediately rush to file a provisional application for a patent (here in Australia), stop telling everyone about the details of the research, and instruct everyone I know who knows about it to keep quiet.

I’m not entirely sure if this is exactly the right thing to do. Firstly, my idea is only an idea at this point. I’ve just started my research and haven’t actually collected any meaningful data. I’m pretty sure my idea will work, but science has been known to throw curveballs. I’m wondering if it’s too soon to patent?

There is a small fee associated with the provisional patent, and it would take some time to write up, but the bigger issue could be managing the personal/professional relationships involved. Although the idea is mine by any standard, I’ve been discussing the idea in the lab group and with my supervisor/co-supervisors. There could be potentially difficult conversations about credit/ownership. For example, even though I have two co-supervisors, I've only talked to them once about this project (and their feedback has been almost entirely “sounds good, keep up the good work”). As no one in the group has ever patented anything, I’m not sure how it will go down exactly.

I’m also unsure about what to do about the parts of the idea which are collaborative. The platform technology is entirely my invention, but the most commercially lucrative application of the technology was suggested to me by an academic I consulted with once. I'm wondering if I should just try to just patent the platform technology and my lower impact applications (easier, as I can just do it myself) or should I try to go back to this academic I consulted with and try to put him on the patent (again, I’m not sure how amenable he would be to this whole idea of commercialization, so that could potentially be an interesting conversation)?

The other question is to do with disclosure. I’ve just learned that apparently in Europe, as soon as I disclose the invention to the public, I can no longer patent it. I have written up a relatively detailed description of the project on my personal website. Given that my site is about as low-traffic as you can get, should I take this down to try to save the novelty of my invention?

Also, I’m not sure what to do about my friend’s advice to basically get everyone in my lab group to sign nondisclosure agreements (or at least swear them to secrecy). Is this really necessary, even after I’ve patented the idea?

Overall, I’m just try to get a feel for how urgent this, in fact, is. Ideally, I would feel more comfortable waiting til I have some data to support the idea (for various reasons, it could take another month or so for this to happen). However, I do have to regularly give talks to the lab group and its visitors or other people in the department, and from what my friend is saying, each person who finds out about my idea is another cause for concern. So, I don't want to shortchange myself, if that's the case. But, it's also difficult to go from being open source to closed-door businessperson overnight.
posted by cestlavie to Technology (13 answers total) 1 user marked this as a favorite
Someone correct me if I'm wrong, but aren't things more complicated by the fact that you seem to be doing research at a university? If you get your preliminary data and it looks promising, would those studies be funded by you/other investors or from a government grant that your PI received?
posted by extramundane at 5:58 AM on April 7, 2014 [1 favorite]

You need to chat with your institution, because they may own everything you've done to date.
posted by aramaic at 6:03 AM on April 7, 2014 [17 favorites]

I run into student IP issues a lot in my job at an American university. At least here, each case has to be looked a case-by-case - a lot depends on the source of the funds that are supporting the student's work, on the wording negotiated in that particular contract, on the university's policies, etc. At least here, you could not just whip up an NDA yourself and ask people to sign it - whatever they were signing would have to go through the university contract office. And you may have no right to do any of this - it may all belong to the University.

Obviously I have no idea about how Australia may differ. But if your university has something like a tech transfer office or a research commercialization office, I would suggest you start by reviewing any information they have online, and then perhaps contacting them for advice.

What we see most often here is that students/staff/faculty jump way too far ahead of themselves in trying to spin off their research without understanding what rights/responsibilities their funding carries with it, or understanding the rules about patenting, and sometimes screw themselves over in the process. This stuff is complicated, and you want an expert's guidance.
posted by Stacey at 6:04 AM on April 7, 2014 [6 favorites]

In order to answer the question "should you patent?", you need to articulate the reasons why you'd want to patent. Having a patent doesn't prevent somebody else from implementing your idea, it just gives you legal recourse.
My personal opinion is that in the majority of cases, it's a better use of resources to focus on the other aspects of monetization and to worry about patenting after other business hurdles are cleared. Although it's possible that someone could snatch the IPR in the interim, the chances of that scenario ends up being what prevents the business from taking off seems pretty remote. Patents are resource intensive and are only one component of a viable business strategy, the business strategy should precede the patent IMO.

This may all be moot, as others have said, your organization may already have policies in place.

IANAL or business consultant, but I have dealt with patenting and my strongest advice is to come to your own conclusion after you've done your own extensive research.
posted by forforf at 6:56 AM on April 7, 2014

Focus on your research. Almost anything at the idea stage could be huge, but usually isn't. Secrecy is potentially more of an impediment to your work than you may realize, and often, additional key, patentable steps will come out as you progress.

I mean, yes, you may have the secret to wealth here, but you don't know and there are downsides to pursuing your research from that angle.

My advice: talk to your advisor.
posted by zippy at 7:01 AM on April 7, 2014

I am an Australian researcher. What Stacy says holds broadly true here. If you've developed the idea within a Research Institution or University, said Institution will impose ownership. I've never known any Institute or University that doesn't have avenues for commercialization, which you should be able to contact for advice. Personally, I recommend talking to your supervisor first.

And yes, take down your post immediately and acquaint yourself with the concept of prior art.
posted by kisch mokusch at 7:12 AM on April 7, 2014 [3 favorites]

I say this as an academic researcher with several patents and a start-up company: Yes, you should at the least file a provisional. But do it in partnership with your PI and the University. This is actually the best way to go, as a decent research university will have a patent office which will do most of the work (and pay the costs) for you. In return you will share the profits, if any, from the patent with the University and your PI. This lowers the return some but lowers the costs tremendously (to just time). If you want to create a start-up from this idea, look into incubator space at the University. Again that's a setup that usually greatly decreases your costs in return for some, usually pretty small, degree of profit sharing.

Additionally, in the current pseudo-corporate academic world patents look very good on your CV, should you desire to go on in academia. A functional departmental search committee will know that someone who has a track record of money generation will help them extract a good start-up package from the upper level administration.
posted by overhauser at 7:28 AM on April 7, 2014 [4 favorites]

I’ve just learned that apparently in Europe, as soon as I disclose the invention to the public, I can no longer patent it. I have written up a relatively detailed description of the project on my personal website. Given that my site is about as low-traffic as you can get, should I take this down to try to save the novelty of my invention?

Not only in Europe, but in most countries. Including Australia. The Commonwealth Patent Act 1990, Sect 7 reads:

Novelty, inventive step and innovative step


(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;

(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;

(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.

I would guess your ship has sailed and taking down your website is meaningless at this point. The key is whether or not the information was AVAILABLE to the public, not that it was actually seen. You need to talk to an Australian patent attorney about the specifics of your case. Your university should have rigid policies already in place for this.

I’m also unsure about what to do about the parts of the idea which are collaborative.

It is a requirement pretty much everywhere that everyone who has made a material contribution to the patent be named as inventors. Simply tell all you know and let your patent agent sort out the details for you.
posted by three blind mice at 7:53 AM on April 7, 2014

Yes, talk to your institution.

IANAL, but be cautious taking advice about this sort of thing from people in the US. The US has historically given patent rights to the inventor, where most of the world gives patent rights to the first person to patent. (Even in the US, this may be changing, but someone's experience from five years ago wouldn't reflect it.) This is the kind of thing that an actual lawyer would be able to advise you on. Even if your university doesn't legally own your work, they likely have a lawyer or can refer you to someone who has worked with them before.

The fact that your "aspiring entrepreneur friend" thinks that you can get your colleagues to sign an NDA suggests that perhaps this friend doesn't know what he's doing. They don't work for you. I wouldn't sign away my rights just because someone I worked with thought they could make money off our shared labor.
posted by catalytics at 8:16 AM on April 7, 2014 [1 favorite]

Congratulations on your invention!

Work with your university for sure but it may be useful to retain your own counsel so you get independent advice. You want a local well reviewed patent lawyer who has encountered your particular uni before.
posted by Mistress at 9:40 AM on April 7, 2014

Your idea is probably not worth anything and you are probably subject to policies that say the university owns the invention anyway. Retaining your own counsel is probably a big waste of money if you can get the university IP office to evaluate the invention and prosecute a patent for you, paying you royalties if anything comes of it.

You should talk to your supervisor and your institution's IP office if you are interested in pursuing this further. Don't destroy your relationships with people who you'll need to advance in your career for a speculative and probably nonexistent payoff.
posted by grouse at 11:00 AM on April 7, 2014

IANYL, but here are some concrete steps for your consideration.

Take down your website. Don't disclose the invention to anyone or publish it further.

Talk to your university's tech transfer office. If the university doesn't have one, contact a patent agent or attorney (you may be able to find one in your area by searching on your government's patent office website).

Be sure to tell the officer/patent attorney about the website and all prior disclosures (verbal or written). You may need to disclose these to the patent office at some point, but a professional can guide you.

The officer/patent attorney will advise you as to confidentiality agreements, effect of prior disclosures, and who is considered an inventor.

I think you're getting ahead of yourself with a lot of your concerns. Start with talking to a professional, and the rest will start falling into place, with some professional guidance. There is a ton of mis-information about patenting and patent laws, so go the professional route.
posted by smokyjoe at 11:10 AM on April 7, 2014

Definitely talk to your supervisor. Your university will definitely have a policy on IP. Some are fairly generous. At my university (in Australia) IP is shared between staff and university, and research students retain all their IP. (This is from memory rather than looking it up: I don't really work in a field where it is relevant). Moreover the university has people whose full time job it is to help students and staff file the relevant patents and talk to industry about commercialization. The university WANTS to commercialize your ideas. Even for those where you retain IP and get the profit, it looks good for the university to have inventions come out of it.

The university will also almost certain have legal advice for postgrad students. At ours you would get a 1 hour free consultation with a lawyer who is paid for by PARSA (the postgrad students' association) and so has no incentives to side with the university against you.
posted by lollusc at 6:40 PM on April 7, 2014

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