Recap: Science, Technology, and Intellectual Property
Friday, January 21, 2011 at 12:27PM Intellectual property (IP) is the foundation of technology ventures yet the laws governing and protecting IP rights are unfamiliar territory for most scientists. What should researchers know in order to protect their inventions and innovations? This question was addressed in the Science Alliance seminar Science, Technology, and Intellectual Property held November 2, 2010, at the Academy. Below I’ve summarized the main points presented by chemical engineer-turned-patent lawyer Jeffrey Rosedale.
What is patentable? Just about anything manmade. “And they weren’t kidding,” Rosedale added, listing several amusing patents like animal ear protectors and a high-five simulator. Laws of nature, natural phenomena, abstract ideas, and humans are not. Of note is that improvements to existing technologies and new uses for existing technologies are patentable.
What are the legal rights that a patent provides? It provides an exclusive property right preventing others from copying or practicing your invention for twenty years. It does not, however, give the owner the right to practice the invention. In the end, according to Rosedale, a patent is a business tool.
What are the requirements for patentability? Rosedale listed 5: it must be useful, novel, and non-obvious, and the description of the invention must indicate its best use and be detailed enough that others can reproduce and use it (like the results section of a manuscript).
What are some problems that can arise? Publishing or presenting your invention before filing a patent can void a patent claim. Not keeping clear, dated records of the work on your invention can cause you to lose out if a competing patent is filed and you are unable to demonstrate that you were first. (So if your lab notebooks are a disaster, this might incentivize you to get organized).
What is the process for patenting an invention? Draft a patent application and file it with the US Patent and Trademark Office. There is no fixed timeline but expect the patent process in the US to take several years or more.
To learn more about patenting and licensing, check out the case Intellectual Ventures (available for purchase at Harvard Business Review). Discussed by venture capitalist David Anthony in the second portion of the seminar, this reading examines a business that acquires patents and generates revenues through licensing deals.
If you are interested in hearing more, the eBriefing for this event including slides and audio has been posted here (NYAS membership required for access).
If you are interested in patent law as a career, check out Science Alliance’s career path video and resource page on careers in business and law.