Translating your Research into Intellectual Property

Hello fellow graduate students! I am excited to be a part of the community this year. For my first blog post, I wanted to write about something that is particularly exciting to me – transitioning our research into the field! This is an essential step in the scientific journey we are taking as we go through graduate school. Our research needs to be accessible to the public after it is completed, and can make a huge difference in our society.

If your research could be patented and converted into a good or service, you should benefit as well! There are some ways that you can avoid pitfalls and navigate through the more difficult, unfamiliar work as you try to obtain protection for your Intellectual Property (IP).

The first and most important thing that you can do is to understand your school’s IP policies. Do they have ownership on any idea you develop? Does the school only have a stake in this idea if you used their materials or resources (computer programs, etc.)? Do they let you run completely free and make no claim on your invention? Better understanding the policies in place and knowing if you have already signed IP documents will help you understand your next steps.

Most engineering schools have technology transfer offices that may be able to help you file a patent application – oftentimes they will even pay the filing fees associated with your provisional patent application. This patent is never actually examined by the Patent & Trademark Office, but acts as a placeholder to establish a filing date. You are granted a one-year period in which to upgrade to the more expensive, “full” patent application (a “nonprovisional patent application”) while still retaining the filing date of the provisional patent application. The provisional patent is especially useful for us graduate students. Any information that is publicly disclosed (at a conference, in a journal, at a public presentation, etc.) is no longer able to be patented globally. If you do need to complete one of these activities and discuss your potential IP, you should file your provisional patent application with some write-ups of your idea, as well as notebook pages relevant to the idea. Consulting legal counsel, even for these provisional patent applications, will definitely help your application be more robust. Again, your school may have some sort of office with legal staff that could help in this matter. You should also mention at your conference, talk, etc., that you have already filed a provisional patent application.

Your lab notebook is also very important! It not only provides proof of your idea, but it also provides proof that YOU contributed to the IP. This could be essential in ensuring your name is on the patent submission.

Once you get to the point of actually submitting a nonprovisional patent application, be informed of the market in which your design will flourish – is it worldwide? You may want to file a more wide-reaching application – like the PCT (Patent Cooperation Treaty) patent application, which is an international application. Some specific countries may still have differences, so if you expect to have large impacts in specific regions, take a look at those too. In addition to knowing what type of patent application you wish to file, be knowledgeable about the patents filed in this field already. You are the best person that can understand the technical similarities of your design to others already patented. By determining that no prior art exists, you can also keep your bill lower and not ask your lawyers to do this search for you. Keep in mind that your patentability is defined as “new, non-obvious, and reducible to practice”.

Once you have filed your patent application, decide how far you are willing to go to bring this to market. Do you want to simply license your patent to a larger company already in the field? Do you want to run a start-up for a little while and then accept the money when someone comes to buy you? Do you want to be the next Google? Understanding what you and your team members are willing to do will be important so you can avoid arguments in the future.

Additionally, as you continue to work on your design prior to obtaining approval, remember to mark anything you contract as “confidential”. You should also look into sending Non-Disclosure Agreements to any contractors who may need access to your design or IP in order to complete their job. These legal documents are older and you can even find samples on the internet for free. This will help to protect you until you get your patent.

Lastly, if you are in the medical device field, try to master two totally different mindsets. When the FDA comes calling, you will benefit most if you can prove similarity in safety and efficacy to other currently approved devices. This will set you up to be able to obtain FDA approval through a 510k submission, which is significantly cheaper and shorter. When working with your lawyers and the PTO, remember to emphasize all of the differences and improvements your new device will offer – it is nothing like those currently on the market!

I hope this information was helpful to many of you – I have learned most of this through my own experiences so I would love to hear any feedback any fellow entrepreneurs in GradSWE have!

Feel free to comment on this post through social media, or e-mail me at grad-coordinator-elect@swe.org

Hope you are all enjoying your summer!

Carolyn

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