Stories of Medical Innovation

Should You Patent Your Research?

Universities are hotbeds of innovation. According to 2012 National Science Foundation data, university-performed projects accounted for more than 15 percent of total research and development in the United States.

As academic researchers continue to participate in research and development, opportunities to commercialize their discoveries and inventions abound. When these opportunities arise, the conversation about protecting intellectual property becomes increasingly important.

“The purpose of the patent system marries well with the pursuit of knowledge in academia,” says Jennifer Giordano-Coltart, PhD. “Patents are about moving knowledge into usable forms where they can benefit the public.”

Giordano-Coltart and her colleague Charles Calkins are patent attorneys with Kilpatrick & Townsend, whose practices focus on biotechnology, life science and chemistry patent law. The pair spoke at the 2016 Open Thinking Showcase held by Wake Forest Innovations, sharing their expertise on the benefits of patents in the academic realm.

What’s the Purpose of Patents?

Of the three major areas of intellectual property rights (copyrights, patents and trademarks), patents can cover most inventions that come out of academic institutions, including machines, systems, therapeutics and other compositions of matter and processes, as well as new uses for any of the preceding. The government issues utility patents to academic inventors that provide a 20-year market exclusivity period for their inventions.

“It’s a carrot system,” says Giordano-Coltart. “Protection is given in exchange for disclosing the technology or product and putting it out there into the public. With innovation, everyone stands on the shoulders of giants. Every development builds on the knowledge that came before it.”

In this quid pro quo system, the point at which most academic innovations reach the market is through licensing the right to commercialize intellectual property to companies.

“In an academic setting, one of the most powerful things you can do is to give someone else the right to use your patent,” says Calkins. “Licensing gives an industry partner the ability to commercialize a technology in ways the inventor can’t or doesn’t want to.” In this way, licensing can also maximize the commercialization opportunities for an invention.

Is a Patent Right for You?

The question still remains: should you patent the fruits of your research? There are a few questions you can ask about your research to help you decide the answer.

1. Is anyone else working in this field?

A common reason that patents are rejected during the application process is that they are too similar to patents already in existence. Unless an invention is new and unlike technologies already documented, the product does not receive patent protection.

Part of the patent process includes understanding the “state of the art” around your technology, which discovers the space available to protect intellectual property.  This research, which is best conducted with the assistance of patent experts, helps to establish what is different about your innovation and highlights in what areas you could further innovate.

Also, by applying for a patent, you combat the risk that someone’s patents exclude you from creating innovative solutions derived from work in your area. “You don’t want to take the risk that someone else patents ahead of you and excludes you,” says Calkins.

2. Do you want to license your device, drug, diagnostic or process to an industry partner?

If you hope to commercialize your research someday and partner with a company to produce a product or process, obtaining a patent can add value in the eyes of potential partners.

Companies are more likely to invest in a technology when strong intellectual property protection is in place because it improves their ability to obtain a return on their investment. The path to commercialization can be a long one—it takes a lot of time and money to bring medical devices and therapeutics to market—so being rewarded with a period of market exclusivity is a major incentive for companies interested in licensing technology for commercialization.

“We see this problem frequently with universities,” says Calkins. “If researchers are not involved with a commercialization-minded group, sometimes they don’t think about the potential for commercialization, and the eventual product does not get protected.” Considering and understanding how technology can be commercialized is important to developing intellectual property rights to facilitate commercialization.

3. Do you plan to publish your research?

For most researchers, publication is essential. Those in patent law recommend that researchers who are considering commercialization file a patent application describing their technology before they publish in a journal or present at a conference. In some instances, putting information about your innovation out into the public before filing for a patent application can cut off your rights to pursue patent protection.

Once a patent application has been filed, publications are an important part of commercializing technology. Companies pay close attention to technology developments and look for potential new products and improvements.

“Patents do not prevent you from publishing,” says Giordano-Coltart. “Patents protect the work that you have done in your research and add value to products you may want to commercialize later.”

What Happens Now?

If you think commercializing your research can benefit from a patent, there’s another question you should ask yourself.

Is your research patentable?

The requirements for receiving a patent on your device, drug, diagnostic or digital health innovation are that it be new (or a significant improvement on an existing technology), non-obvious and useful. In other words, no one else has done it and the innovation should not be obvious to someone familiar with the field.

“Being deemed ‘useful’ is the lowest bar,” says Giordano-Coltart. “Useful means useful.”

Need help knowing if you should patent your research? The Center for Technology Innovation & Commercialization partners with groups like Kilpatrick Townsend & Stockton to provide the resources you need to patent your discoveries.

Start a conversation with us today by calling +1.336.716.3729 or emailing commercialization@wakehealth.edu.