Determine the following to start your patent application:
- Inventions – Is it a patentable invention? In the U.S., a patentable invention should be “a process, machine, manufacture or composition of matter or any improvement thereof” It must be novel and non-obvious. It must not be described or published in prior art; there must be no other technical disclosure.
- Inventorship – Who are the inventors? Determine who to include on the patent. Be careful to get this correct as mistakes can invalidate the patent.
U.S. policies for who to include are complex and tend to include more individuals than some other countries (Takenaka, 2021). - Ownership of Inventions – Who owns the invention? Many employees are required to assign their invention ownership to their employers.
- Timing – When should you file your patent application? – In academia, the university is more likely to pay patent costs if they are convinced that your technology is likely to succeed in the market. This favors waiting until you have enough evidence to convince them. However, while waiting, your technology or idea is not protected from use by others. Other reasons to consider delaying a patent application include the high cost. Filing a provisional patent gives you some protection at lower cost for up to a year.
- Country of filing – Where do you file your patent application? – You are required by law to file in the U.S. first if you are the inventor and a U.S. citizen. The subject matter of your application must be reviewed by the U.S. patent office before filing outside of the U.S.
There are quite a few avenues for protecting your invention outside of the U.S. The 5 jurisdictions for patents in the world are: US. Europe, Japan, Korea, and China. Your invention must have absolute novelty to get a patent. If you disclose your invention, you lose your rights to a patent immediately in regions other than the U.S. There are ways to file an international application, for example, a Patent Cooperation Treaty. Filing around the world is expensive and takes a different lawyer for each jurisdiction. U.S. attorneys and agents are not allowed to represent you in other regions.
Source: Guatam Prakash, PhD, JD, IP Advisor for NHLBI, NIA/NHLBI Entrepreneurship Webinar: Intellectual Property, June 9, 2021.
