PBL works closely with inventors of its technologies to ensure strong patent protection, to maximise the potential commercial revenue, and to avoid or minimise any disruptions to plans for research publication.
PBL is always happy to be approached at any time with such inquiries. Generally speaking, if a new scientific result that you have generated excites you sufficiently that you are thinking of disclosing it via publishing or giving presentations about it, then it is best to seek advice about IP protection and commercial potential before disclosing it. Do not leave it until you have already submitted a manuscript for scientific review and publication. Some journals immediately publish (online) proofs, earlier than the formal publication of a corrected manuscript. Similarly abstracts for meetings/conferences may publish online and these can, depending on the content, disclose the new invention/technology, damaging or destroying your protection options. It is better to seek professional advice early, since once an invention is disclosed the chance to obtain wide patent protection may well be lost. Even the discussion section of a paper that speculates about future research steps could damage your rights. Hence it is advisable to seek advice as soon as possible, certainly well before disclosing it. It may even be worthwhile seeking advice before starting research, since often this will help anticipate the timing and smoothly protect the invention (i.e., with a patent application) without delaying an academic publication.
PBL requires information from you to efficiently (for you and for us) prepare a patent application. A draft manuscript may be a good start, but we will need additional information and data, as we explain in this section. We have also prepared the PBL Guide to Patenting which covers the patenting and commercialisation process, together with how this interacts with the ability to publish. Please read this guidance carefully and seek professional advice as it will greatly assist the process of protecting your invention. The information we will need follows the general structure of a patent application:
Provide an invention title that is brief, descriptive and accurate.
Indicate the invention’s technical/scientific area and discuss the state of the art in the field (i.e., "prior art"). Please explain the nature of the problems, challenges, or difficulties which your “invention” solves. Please also explain why your invention is better than the previous solutions of which you are aware. Please provide PBL with ALL the published information that relates to your invention that you are aware of, including that published by your lab or by others, in any language. This includes any kind of publication, not just peer-reviewed journals but also talks, posters, abstracts, websites, public databases, etc. (See PBL Guide to Patenting, in the “Disclosures” section). Also include the details and timing of any disclosures made in confidence (e.g. to collaborators) and provide details of any associated confidentiality agreement(s) (preferably a copy). Concealment of relevant information could destroy or invalidate your future patent rights.
Provide the relevant references and, for example, any relevant publicly available reviews.
A new scientific discovery is not necessarily a patentable invention. In many countries a patentable invention provides a useful, technical effect, with a clear benefit; increased efficiency; solves an existing problem, etc. you should seek professional advice as to whether or not your discovery qualifies as an invention. The technical contribution made by your research to creating such an invention needs to be clear and supported by convincing data.
Therefore, please provide a brief, general description of the invention. Then describe the objective/purpose of the invention and in general terms the particular invention features essential for it to work. Please keep in mind that the "objectives" of the invention for industrial purposes may not be the same reasons you studied this topic in the first place!
Please explain any advantages associated with each feature or combination of features. Clearly explain why your invention solves the problems, shortcomings or disadvantages of the prior art / existing technology. Please emphasize anything particularly exciting, surprising or unexpected.
To be patentable, it is not enough for an invention to be new (novel). It must also be inventive, meaning there must be something surprisingly good about it. Technical advantages, unexpected results, solutions to long-felt problems - backed up with technical examples/data as outlined above - are all things that can give an invention the required "inventive step". If literature suggests that the invention will not work, but it really does, then this is also very useful supporting information.
A new use for an existing thing could also be the basis for an invention. For example, if a plant gene has been previously described and is known to provide pest resistance, but your research uncovers that it also speeds growth, then it may be possible to patent the new use for the already-known gene. List and discuss as many applications of the invention that you can think of that you reasonably believe would work, including current and future embodiments. Explain how existing work would have to be modified or extended for each of the various embodiments, and why the new use or benefit would be surprising.
Be sure to discuss all the different reasonable ways to achieve a particular embodiment of your invention. If the patent is restricted to only one way of doing something, then competitors may easily find alternatives. Be creative and do not be afraid to speculate beyond what you would normally feel comfortable with in drafting a paper for submission to a scientific journal. Such speculations will not necessarily be incorporated in the application but may assist in forming a strategy to protecting your invention.
A full and detailed description of the invention is required for a patent. In return for a full disclosure in a patent application the Government may provide the applicant the right to stop others from using the invention. Without a full disclosure the patent office may reject a patent application or even invalidate a granted patent.
Therefore, please explain your work on the invention, giving full details of the work done, the results generated and the full experimental protocols used. For standard techniques used, reference can be made to published texts. Results should include data, diagrams and tables, e.g., any nucleotide or protein sequences, etc., and any functional or phenotypic data that supports an industrial utility. Figures should be accompanied by a legend. Nucleotide and/or amino acid sequence data in particular MUST be completely accurate. Any subsequent corrections to sequence data must be advised immediately. Please provide full references of any cited publications.
Accordingly, and in contrast with the approach sometimes taken with scientific journal publications, nothing should be held back which any person (or team) skilled in the relevant field would need to know in order to work the invention. Furthermore, the best way known to you for practising the invention should also be included.
Please describe any further work that is ongoing or proposed, and please estimate approximate dates when useful results are expected. Also explain any work which is not planned at present but which would, ideally, be required to demonstrate the use of the invention. It is very positive if your lab is continuing research with the invention, not just for supporting patent protection but also for assisting PBL’s efforts to generate commercial interest in your invention.
Please list everybody (full names and nationalities) who has made a contribution to the invention, by way of creating the original ideas, experimental design, interpreting the results, and hands-on work, and briefly describe the precise nature of each person’s contribution.
Not everybody listed may be an inventor in the legal sense, even though they might all be considered as authors on a scientific publication. An inventor is an actual invention creator, and only people who have made essential intellectual contributions to the invention are listed as inventors. Those who have simply carried out technical work at the direction of others, even if such work is technically challenging or complex, are typically not inventors – unless in the process of the work they have overcome some unforeseen, extremely challenging and non-routine problem, specific to the invention, that enabled the invention to be fully made/described. Determining inventors is quite technical and will be decided by our patent attorneys, because an error could invalidate a patent. So it is extremely important to correctly, fully and honestly determine the inventors.
Commercial arrangements often involve supplying reasonable samples to the industrial partner to enable testing and development. PBL will need to know what materials are potentially available, now or in the future, that may be useful for this purpose.
You may be contacted by academic third parties wishing to receive samples of your materials relating to the invention for their own academic research. PBL encourages such public research cooperation and we will work with you and your University/Institute to put in place suitable agreements (i.e., Material Transfer Agreements – MTAs) to cover such exchange of materials. See also MTAs in the FAQ section.
Depending on the relationship and employment contracts between the inventors and their employers/institutions, the ownership of an invention may be complicated. PBL will need to understand the full details of the inventors, their employment, and any relationships and contracts between various institutions related to the invention to ensure that future issues do not arise.
If your invention was generated under a research programme funded by an external organisation (whether commercial or public/state) there may be additional restrictions imposed on what you or your laboratory/employer can do with inventions. You MUST tell PBL about any contractual restrictions that apply to the invention and any research results. We will usually need to see copies of corresponding contracts.
If you have any further questions on any specific items or are unclear about the relevance of specific information that you or anybody else may have concerning the invention, please do not hesitate to contact us.
None of the above or any documents provided by PBL are intended to provide a legal opinion. We encourage inventors and applicants to seek their legal opinions from their own lawyers and intellectual property professionals.
Please feel free to contact us with any questions you might have.