A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. Securing patent protection is one of the most important ways of safeguarding your intellectual assets. In order to succeed and stay on top of the game, companies must distinguish themselves from their competitors based on their intellectual property portfolios. Patent protection stops your contenders from making, using, distributing, or importing your innovation in the country or countries in which patent rights are granted. Let us delve into the world of patents and learn how to effectively safeguard your intellectual property with these simple tips.

 

1. Strike Early By Prioritizing Patents

You may miss out on protecting invaluable intellectual assets if you do not know what sort of technological advancements can be patented. Consequently, one of the most important steps for acquiring patents is identifying all the potential patentable technologies early in the developmental processes. This helps in preventing unauthorized disclosures. If a technology is discussed in public, its patentability is lost. Recognizing a patentable idea and protecting it at the right time safeguards your time, money and efforts invested in developing and nurturing it further. Furthermore, it provides recognition for your creativity and increases the likelihood of receiving material rewards for the invention.

Moreover, it is important to identify all the possible iterations and possible modifications that can be done related to the technology at hand. With assistance from a technical expert and a qualified patent attorney, ensure that you have covered all the probable adaptations and variations of the technology. It will allow you to protect and benefit from the complete scope of your technology. Moreover, filing multiple patents for such variations warrants that your competitors are unable to replicate the technology with minor modifications and reaping the

 

2. Know What Can Be Patented

There are three key conditions – novelty, innovation, and industrial applicability which must be fulfilled for an idea to be patented. The invention must demonstrate a new characteristic that is unknown in the current body of literature. It should be such that an individual with ordinary skills in the relevant field should not be able to deduce it very easily or obviously. However, while filing the patent one must describe it in sufficient details such that any person with ordinary skillsets in the similar field can replicate it. The patent must also demonstrate industrial applicability.

Another important aspect that one needs to keep in mind is the clause of subject-matter patentability. Several countries have specific pre-defined norms on subject matters that are eligible for a patent. For instance, some countries do not allow patents related to scientific theories, mathematical models, and/or computer programs.

 

3. Conduct a Thorough Patent Search

          Before filing a patent, one should ensure that the innovation has not been anticipated by publication in any form prior to the date of filing the patent. For confirming this on must conduct an exhaustive patent search. There are various methods of identifying already existing patents.

1. Search through credible databases such as WIPO or the USPTO website.
2. Perform a comprehensive patent search using keywords, phrases, inventor names etc. using Google’s patent search option.
3. You may also seek expert guidance from patent and trademark resource centers.
4. You can also perform a prior art search within journal articles in your field.
5. Another strategy is to attend national and international conferences to identify latest technological trends and cutting-edge developments.

 

4. Choose the Type of Patent Protection

There are two kinds of patent applications that an individual can file based on his requirement. They are provisional and non-provisional patent applications. Let us understand how do they differ from each other.
Provisional patents are informal, easy to file and quick. The inventor receives a one year window to file a corresponding non-provisional patent. The benefits of filing a provisional patent are as follows:

• Quicker preliminary process
• Less expensive than filing a non-provisional patent
• Helps in establishing an official USPTO filing date enabling priority
• Allows the patentee one year window to fully assess the commercial viability of the technology

Non-provisional patents on the other hand are more formal. One must draft them with strict adherence to the standards of patent application. A patent examiner thoroughly examines the application and if approved provides patent protection for 20 years from the date of filing.

A researcher must carefully weigh all aspects before deciding which patent protection to apply for. Provisional patents are useful if there are multiple versions of a technology and the patentee is unsure about which variant is commercially more valuable. However, an improper provisional application and patent description may prove fatal to your application, making it worthless.

why is patent important in research ?

 One of the main functions of the patent system is to foster technological innovation by providing an incentive for research and development. The patent system also works to diseminate technical information and promote technology transfer.

 

In other words you have a patent and you now want to apply for a PhD: 

I think the only impact it may have is that in the interview you face at the time of admission anywhere to a Phd program you may be viewed favourably.

I do not think many people, or in fact a vast majority, has published BEFORE entering Phd! I was one such person who had nine publications- but mine was a weird case to say the least and even though I was (technically) not eligible to enter into Phd, due to my publishing record (in peer reviewed journals) I was allowed to take an exam and go through all the normal procedures. There was no exemption there!   There is no generic rule that PhD students can't patent their work. When they do, usually, the university or research institution has rules about who owns the IP of what's being done in their labs.

 A patent is a right to use an invention. If you made a product—your product—your right is to exclude others from using, making and selling the product. If you created a new method of using a product, then your right is to exclude others from using that product.

 

IMPORTANCE OF PATENTS:

       Patents have a positive effect on society because they promote innovation and help develop new products. They also protect intellectual property. When an inventor obtains a patent, they secure the right to exclude others from using, making and selling their product or method of use for 20 years, while maintaining the right to sell the item exclusively and for a higher price.

In three minutes, Toshiko Takenaka, W. Hunter Simpson Professor of Technology Law, answers questions about the reasons and requirements for obtaining a patent, who owns the patent if an inventor is employed by a larger entity and how patents benefit people.

 

Read the transcript

Toshiko Takenaka (TT): Hi, my name is Toshiko Takenaka. I'm a professor at the University of Washington School of Law.

Three-Minute Legal Tips (TMLT): What is a patent?

TT: A patent is a right to use an invention. If you made a product—your product—your right is to exclude others from using, making and selling the product. If you created a new method of using a product, then your right is to exclude others from using that product.

TMLT: Why would someone want to obtain a patent?

TT: Because, for example, setting a new phone with a great function you don't want someone to copy your product. You can sell the product exclusively, which means that you can sell the product with a higher price and exclude other competitors. By doing so, you can protect the business.

TMLT: What are the requirements for a patent?

TT: Invention must be new and inventive over conventional products and services already in the market on the date of filing, which means you have to keep your invention—your creation—in secret. Otherwise, you will not be able to obtain a patent. As long as U.S. patents are concerned, you have one year from the date of publication/communication with others to file a patent application.

TMLT: How long does a patent last?

TT: Twenty years from the filing date. That is universal not only in the United States but also everywhere in major markets.

TMLT: If someone develops a patent while working for a company who owns it?

TT: The original owner of invention is always the inventor, not the employer. However, when inventor starts working for her employer, usually she is asked to sign a contract to assign the ownership of IP rights, including patents, to employer. So, depending on the scope of assignment of contract, IP rights, patents transfer to employers automatically or sometimes with confirmation in writing, so that's all depending on the contract.

TMLT: How do patents benefit everyday people?

TT: The patent system promotes innovation. Patents give incentives to drug manufacturers, software companies, high-tech companies. Otherwise, no innovation, no new products or innovative thinking. Once patents expire, methods, products are free to use by anyone else. So, therefore, patent system push innovation and introducing new services and new products.

 

Can I patent my thesis?

Yes, Ph. D. students can usually patent their work -- meaning that they can be one of the Inventors, or even the sole Inventor, on a patent application (if that's appropriate, and the student is the only person with intellectual contribution). Once a part of your thesis you want to patent is published in a journal, then it is generally no longer patentable, because it is no longer "new". From the patent point of view, the invention you want to patent must be "new", it means that it has not been publicly known at the time you file your patent application.

 issue is who is entitled to the licensing fees. That will vary from institution to institution by policy, and may also involve agreements on Sponsored Projects (which might actually preclude a patent application if the University screwed up and signed a bad document).

In many cases, the University is the assignee of the intellectual property, and doles money out to those involved. Often this is a pretty fair deal. Patents can be expensive, and if the school is willing to do the heavy lifting, that's not bad. Corporate inventors on a patent might get a hearty thank you and a small token bonus or gift.

In and of itself, publications have nothing to do with the ability to file a patent application, but are often considered to be DISCLOSURE, which starts a clock ticking -- so if a patent is a consideration, don't publish without speaking to the university intellectual property people to guide you.

Just because you CAN apply for a patent, that doesn't mean that you should, or that the patent will be granted. Talk to someone with expertise, who will work with you on a prior art search, and discuss the business case.

 

If you are working with industry during your Ph.D., it can be maybe of interest to do some patenting in collaboration between industry and university, but this is depending on legal matters. It can or not be possible. Usually universities are more interested by writing papers rather than patenting.

his is Jay Shendure. During his PhD in 2005 he developed a radical new way to sequence DNA. This helped spawn a new market for DNA sequencing that was valued at $4.5bn by 2018. And the cost of sequencing a human genome is now one million times cheaper than it was in 2005. It all started with a key enabling technology he proved out during his PhD

This technology has been used to:

1. understand the causes of thousands of rare genetic disorders
2. develop treatments for cancer
3. slow the progression of disease outbreaks
4. build a definitive evolutionary tree of life
5. identify an extinct species of humans, the Denisovans
6. improve crop yields

There aren’t many PhD theses as groundbreaking as Shendure’s. But, he came out of George Church’s lab. And it was Church who laid the foundation for this discovery over 20 years of research. Professors enable their PhD students to be successful. The professors in turn are supported by the scientific community, universities, governments and charities

And the reality is that the precise method used today is a related technique developed not by Shendure, but by scientists in Cambridge. Although few people are capable of achieving what he did, no groundbreaking research can be credited to a PhD student alone

 

 what is purpose of a patent in PHD?

 

Protecting a product with a patent ensures that competing companies cannot claim an idea or product as their own. As an academic PhD, you understand the value of intellectual property, but the steps taken to protect this valuable information are more involved in industry.

 

Is the patent (including its figure) a work

Copyright only protects works that show some level of ‘creativity’. This is a low threshold, and, generally all works where creative choices are made (e.g. in the choice of words and their order) are subject to copyright protection. We consider a patent creative enough to be a work and thus to be copyright protected.

in this case, the researcher is allowed to use a figure from this patent in their dissertation without having to ask permission or without having to rely on the citation right.

But, when reusing other people’s work or any citation, do not forget to cite and reference your sources when you do. This is not mandatory by copyright law, but it is required to prevent plagiarism.

If you want to re-use a figure you found on the internet, in a published article or in a book, the answer would probably be different. The figure is still a work, but in most cases the copyright owner is the author or the publisher and not a public power, like the US Patent Office or the Dutch government. Moreover, copyright is probably always reserved by an author or a publisher. Under those circumstances, Article 15b is not applicable. 

However, based on Article 15a, you have the right to cite:

• The figure must be published;
• The source of the figure must be cited and referenced correctly in your text;
• The figure must add something to your work (e.g. you need the figure to explain something or to make a point).

When these three conditions are fulfilled, you are allowed to use a figure from the internet, an article or a book in your work.

If you want to use the figure for decorative purposes, you cannot rely on the Article 15a. You need to ask permission of the copyright owner. Using the figure without permission in this case is considered copyright infringement, even if you cite and reference it correctly.

There is no generic rule that PhD students can't patent their work. When they do, usually, the university or research institution has rules about who owns the IP of what's being done in their labs.

                 1. The University of Padua (hereinafter referred to as the University) has among its primary aims: a) to promote research within the University, including in conjunction with companies and third parties b) to promote the protection of the University's research results through patenting, registration or other means c) to enhance the University's research results, through the promotion of activities that also generate an economic benefit d) to encourage the transfer of the University's research results to companies operating in the market e) to enable its Employees and Non-Employees to share in the benefits that may derive from such enhancement.

 2. These Regulations, referring to the current national, European Union and international rules in force, and, in particular, the provisions of Decreto Legislativo (Legislative Decree) no. 30 of 10 February 2005, as amended and supplemented (the Industrial Property Code, referred to hereinafter as the “IPC”), govern the procedures and activities for the protection of inventions, utility models, plant varieties, topographies of semiconductor products and, more generally, any other form of knowledge, innovation or know-how that may be the subject of an industrial property right, which may have been originated, generated, created and/or developed, for any reason, within the University or within projects, a

 

. In these Regulations, the following expressions shall have the meaning given to them below:

 (a) “Research Activities” means the activities carried out by Employees and/or Non-Employees and aimed, even only occasionally (e.g. students and/or PhD students involved in any way in such activities), at scientific research, using equipment, facilities or financial means belonging to the University or, in any case, economic resources administered by it 

(b) “Patent(s)” means the industrial property rights through which the rights to the Inventions are acquired, including the application for such rights and the right to file such an application. This includes patents for invention, utility models, rights to a new plant variety and registrations of topographies of semiconductor products

 (c) “Employees” means any kind of person employed (on either a permanent or fixed-term.