Patent Pending: Session I

By Sam Sakells

As scientists, we often feel the pressure to publish our work as quickly as possible. The phrase "publish or parish" immediately comes to my mind. While publishing scientific manuscripts is vital to further both our careers and science, sometimes it's better for us to file for a patent first before publishing or presenting at a conference. If we aren't careful about the information we disclose about our innovations, we might ruin our chances of a patent later

My name is Sam Sakells, and I am the Director of Intellectual Property for the Biotechnology Club at UT Southwestern. I am a fourth-year Ph.D. candidate in the Forsberg Lab, and while I study bacteriophages at the bench, I enjoy learning about biotech outside of the lab (especially intellectual property and regulatory affairs). This inspired me to organize an intellectual property (IP) law course for scientists in collaboration with the Innovation Hub at UT Southwestern and Norton Rose Fulbright.

I am writing this blog to go alongside the IP course and serve as a resource for scientists. In this blog series, I will summarize the material discussed after each session of the IP course and provide my thoughts on how we as scientists can apply this knowledge to our own scientific discoveries.

With that, I invite you to grab a cup of tea, get situated, and join me as we review Session 1: Introduction to Patent Law!

Session 1: Introduction to Patent Law (Content Review)


Discussed Topics

  • Description of a Patent

  • Requirements for a Patent

  • Parts of a Patent

  • Types of Patent Applications

Description of a Patent

What is a patent?

A patent is a legal right given to an inventor that allows them to exclude others from making, using, selling, or importing their invention for a defined period (usually 20 years). In exchange, inventors must share scientific knowledge of how to make or use the invention to promote overall scientific progress.

If I have a patent, does that mean I have the right to make, use, and sell my invention?

Unfortunately, the answer is no. A patent gives you the right to exclude others, but it doesn't give you the right to make, use, or sell your invention yourself; in other words, a patent does not grant you freedom to operate. Why not? Well, while you might have a patent on your specific invention, that doesn't mean there aren't any other patents that you would infringe upon if you use, make, or sell your invention.

For example, let's say that you have been granted a patent for bread. You have the right to exclude others from making, using, selling, or importing bread. In this scenario, let's also say that your competitor has a patent on flour. You need flour to make bread, so if you make, use, or sell bread, then you would infringe upon your competitor's patent. Thus, your patent did not grant you the right to make, use, or sell bread; it just prevented your competitor (and anyone else in the country) from doing so.

Now just to put your mind at ease, if you have a patent and do not have freedom to operate, sometimes it's possible to work out licensing agreements or purchase patents allowing you to gain freedom to operate. However, more on that later in future course sessions.

What can be patented?

There are many inventions that can be patented, and I've listed some general categories below.

  • Compositions of matter (i.e. compounds, proteins, genetically engineered organisms, genetically engineered genes/proteins, food products)

  • Methods or processes (i.e. new use for known compositions, methods of making/using a composition)

  • Machines or devices

What CANNOT be patented?

Some discoveries cannot be patented. I generally like to think of these as naturally occurring principles, ideas, organisms, or genes/proteins. An example that we talked about in class was that someone could not patent E = MC2. I think this makes a lot of sense because I view this more of a natural phenomenon that was discovered rather than an invention that was designed. I've listed below a few things that can't be patented.

  • Laws of nature

  • Abstract ideas

  • Physical phenomena

  • Naturally occurring products of nature (i.e. newly discovered gene/protein, plant, or animal)

Requirements for a Patent

What are the basic requirements for an invention to qualify for a patent?

To qualify for a patent, the invention must be:

  • Patentable: See the list above for things that can be patented.

  • Novel: There can't be any public disclosures detailing your invention prior to submission of the patent application. In the U.S., there is a grace period of 1 year for the inventor to file for a patent after they have made a public disclosure. However, not all countries honor this grace period, and if the inventor does not file within 1 year of the disclosure, then the invention is no longer considered novel, and it does not qualify for a patent anymore.

  • Non-obvious: Invention cannot be obvious to someone else in the field.

I'd like to make a note on novelty because I feel like it is a difficult idea for many scientists, including myself. For an invention to be considered novel, there either cannot be prior art detailing the invention, or a patent would need to be filed within 1 year of a public disclosure. Note that the public disclosure would need to come from the inventor filing for the patent to be granted this grace period.

This can be difficult considering that a student's graduation, faculty's tenure status, and overall reputation in the scientific community all depend on quickly publishing a paper. While I too feel this pressure, I want to stress that if we don't consider the role of potential IP for our research, this could hurt us in the long run when we (and the university) want to file a patent.

Who is an inventor of a patent?

An inventor is a human who contributed to the conception of the invention. Note that AI is NOT an inventor; it is a tool used by the inventor. I also want to note that authorship does NOT equal inventorship. The guidelines of what constitute authorship vary person-to-person, and this is a gray area to a lot of us in science. However, inventorship is a legally defined term without the same gray area of authorship.

Be careful when listing inventors for the patent. If authorship is not appropriately listed on the patent, then this could invalidate the patent later during patent litigation. This could happen if an inventor is incorrectly omitted or added to the patent, so be sure to work closely with your institution's technology transfer office and a patent attorney to correctly list all inventors in the patent application.

What is enablement for patents?

All patents are required to demonstrate enablement. This means that the information in the patent must be sufficient to teach someone how to make and use the invention. Remember that the purpose of a patent is to disclose how to use and make your invention to further scientific knowledge in exchange for a monopoly over this invention for some time.

Parts of a Patent

What are the different sections of a patent?

There are many parts to a patent, and I encourage you to look up real patents online using Google Patents to get a feel for the overall organization of a patent. I have listed below the main components of a patent:

  • Title page

  • Drawings

  • Summary of Invention

  • Detailed Description

  • Claims

  • Abstract

What is the most important section of a patent?

The most important section of a patent is the claims section. The claims define the invention, and they are used as a reference when determining possible infringement on the patent. Because the claims dictate what is considered infringement, the wording of each claim is very important. Infringing upon a single independent claim is sufficient to be considered patent infringement.

Fun fact: Claims are written as one sentence! Pay attention to the punctuation and see for yourself.

Basic Types of Patent Applications

What is a U.S. provisional patent?

A U.S. provisional patent allows you to secure your patent filing date, and it allows you to have a 1-year grace period before you need to file for a non-provisional patent or Patent Cooperation Treaty (PCT) application. This could be beneficial if you are worried that someone else will file for a patent on the invention before you.

Keep in mind that this patent is not reviewed by the USPTO, and you're only protected by the information you provide in this application, so it is best to write this patent application to the same quality as if it were a non-provisional application.

What is a U.S. non-provisional patent?

U.S. non-provisional patents are examined by the United States Patent and Trademark Office (USPTO), and if successful, this patent application results in the granting of a patent. There are several other types of patent applications that might come up later after filing for a non-provisional patent, but your patent attorney will help you through the process. Options include a divisional, continuation, or continuation-in-part application.

What is a PCT application?

A PCT (Patent Cooperation Treaty) application grants you an additional 18 months to file for patent applications in all the countries you want a patent in (i.e. Japan, Europe, U.S.). This could be useful if you need more time to decide where you want to patent your invention. However, sometimes it is sufficient to get a patent in the U.S. alone considering that patents also protect against importing your invention into the U.S.

Conclusion

Regardless of whether you are a graduate student, faculty member, postdoctoral fellow, or staff member, I hope you found this blog post to be useful for you. Often, we as scientists don't think about patent law; however, patent law can have major impacts on our work. While not all research results in a patentable invention or discovery, I encourage you to think about your science in terms of IP and see if you find anything that might be patentable. If you're ever unsure about whether your discovery is patentable, be sure to reach out to the Innovation Hub or Office of Technology Development (OTD) and get their opinion. Check out the OTD website for more information on patentability and disclosing an invention at UT Southwestern.

That's all for today! I wish you a successful week doing science, and I'll see you in the next blog post where I will be reviewing Session 2: Patenting with Purpose.

Acknowledgments

I wanted to take a moment to thank everyone from the Innovation Hub, Norton Rose Fulbright US LLP, and my incredible teammates in the Biotechnology Club for helping make this course a reality. Animesha Krishnamurthy, Kate Borner, and Sanjana Prakash helped me extensively with course logistics and branding. I'd also like to thank Cara Forsberg, PhD, Adam Rehm, JD, and Zack Cleary, JD for all their help organizing the lectures and making this first session a success!

Lastly, I'd like to give a shoutout to Lexus Tatge, PhD, our previous Director of IP Education, who is now a patent examiner with the USPTO. Lexus and I worked closely last year, and she gave me the original idea of making a patent law course for scientists at UT Southwestern.