Determine the following to prepare for your patent application:
- Inventions – Is it a patentable invention? In the United States, a patentable invention is a process or a machine, or a means of manufacturing something or its composition. It must be novel, that is, new and not previously known to or used by the public. However, substantial improvements may be patentable. The invention must also be non-obvious, which means it cannot be an obvious variation on or combination of something already known to or used by the public. It must not have been described or published, and there must be no other technical disclosures.
- Inventorship – Who are the inventors? Determine who to include on the patent. Be careful to get this correct because mistakes can invalidate the patent. US policies for whom to include are complex and tend to include more individuals than policies require in 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 a 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 United States first if you are the inventor and a US citizen. The subject matter of your application must be reviewed by the US Patent Office before filing outside of the United States.
There are quite a few avenues for protecting your invention outside of the United States. The five jurisdictions for patents in the world are the United States, Europe, Japan, Korea, and China. Inventions must have absolute novelty to get patents. If you disclose your invention, you lose your rights to a patent immediately in regions other than the United States. 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. US 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.
