Although I currently am the CEO of Kinder Scientific, a leading animal behavior assay development and manufacturing company in San Diego (KinderScientific.com), I have been (and continue to be!) a registered US patent attorney for the last 28 years. With this as a background, in this blog I thought I’d share with you some tips and thoughts related to patents particularly as they relate to neuroscience and your research.
Patents are part of what is called “Intellectual Property.” Intellectual Property is essentially the product of people’s minds.
- Laws of nature, physical phenomena, and abstract ideas ARE NOT patentable. (I am not sure what patenting E=mc2 would even mean! .... But, I'm sure it would be bad!) Devices (e.g., assays, diagnostic devices) or methods that incorporate these ARE patentable.
- These days, most universities and virtually all companies recognize that there may be value (including financial value to them! - think "Harvard Mouse!" See also "THE ONCOMOUSE THAT ROARED: RESISTANCE & ACCOMODATION TO PATENTING IN ACADEMIC SCIENCE") in getting appropriate patents. So, if you are in these institutions, you might find yourself involved in patenting whether you really want to or not!
- Not everything should be patented; have a clear objective as to why a particular thing should be patented! Sometimes getting a patent just messes things up (e.g., getting a patent that you don't intend to use; this keeps others from using the invention for "the greater good" .... including some aspects of research .... or from building on the invention)!
- The scientific standards for peer review (e.g., for publishing) and patenting are different and serve different purposes (e.g., maintaining standards of quality, improving performance and providing credibility for the former and being useful, new and non-obvious for the latter).
- Patent Attorney is a viable career option for neuroscience students and researchers at all levels of education and stages of career.
To learn more (and to see some cool and fun cartoons!!) click "More."
Patent rights in the United States stem from Article 1 Section 9 of the U.S. Constitution:
"The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times
to ... Inventors the exclusive Right to their ... Discoveries”
This gives Congress the power to enact laws to effectuate a patent system. A patent is essentially a monopoly on the claimed invention for a period of time, NOW 20 YEARS FROM THE INITIAL FILING of a patent application. In order to take advantage of this monopoly, the inventor is required to FULLY DISCLOSE THE INVENTION to the world “TO PROMOTE THE PROGRESS OF SCIENCE AND USEFUL ARTS.” A key point to remember is that obtaining a patent DOES NOT give you the right to practice the disclosed invention. Instead, it gives you THE RIGHT TO PREVENT OTHERS from making, using or selling your patented invention.
TO BE PATENTABLE, AN INVENTION MUST MEET FOUR REQUIREMENTS:
- The invention must be allowable subject matter. In 1980, the US Supreme Court case gave some guidance as to what constitutes allowable subject matter IN Diamond v. Chakrabarty, 447 U.S. 303 (1980). This case involved whether a bacteria created in Dr. Chakrabarty's lab was patentable. The Court stated that Congress intended the Patent Law to "include anything under the sun that is made by man." But, the Court reiterated that "Laws of nature, physical phenomena, and abstract ideas" ARE NOT patentable. However, the application of any of these in a machine (i.e. a computer) would qualify as a patentable subject matter.
- The invention must work. For this requirement, the Patent Office pretty much just takes your word for it. You might be surprised to know that most patented inventions have never actually been made! The exception to the rule that the invention needs to ne known to work is Perpetual Motion or Unlimited Energy inventions. There actually is a Patent Examiner in the Patent Office assigned to review these inventions. For these inventions, the Patent Office requires you to prove that these inventions actually work! So far, no patents have actually been issued for such inventions. (There is a little thing we call “the laws of physics!”)
- The invention must be new; in other words, that exact same invention cannot have been done previously anywhere in the world. The test is:
Has this thing ever been done Exactly like this to perform Exactly the same function anywhere in the world?
If the answer is "yes," the invention is said to be "ANTICIPATED" and therefore NOT patentable. If the answer is "no," you proceed to requirement #4 below.
- The invention cannot be an obvious or trivial modification over what has already been done or an already existing invention. This area, called "OBVIOUSNESS," is an area where there has been a LOT of action in the courts lately! The Patent Law has the concept of the mythical "person having ordinary skill in the art," a person having normal skill and knowledge in the relevant field of the invention but who (amazingly!) knows all the "PRIOR ART" (all the information publicly available related to the field of the invention). If that fictional person, considering all the available PRIOR ART would consider the invention to be non-obvious, the invention is then patentable. This concept is relatively easy to express but VERY difficult to put into practice!!
BEING A PATENT ATTORNEY IS A VIABLE OPTION FOR NEUROSCIENCE STUDENTS AND RESEARCHERS. Let's face it, competing for research dollars and academic positions is hard (though rewarding!) work! Plus, getting your degrees in difficult and rigorous disciplines has given you skills beyond research skills. Patent Attorneys take inventions, sometimes only expressed as abstract concepts, and clearly (hopefully!) explain them in patent applications. (Patent applications are actually legal documents! In fact the US Supreme Court said that patents are the most difficult legal document to craft that there is! “[The drafting of a patent application] constitute[s] one of the most difficult legal instruments to draw with accuracy.” Topliff v. Topliff, 145 U.S. 156)
In order to perform this wizardry, the Patent Attorney needs to understand the subject matter. For this reason, by law Patent Attorneys must have science or engineering degrees or have the equivalent amount of science or engineering education. As you might imagine, the number of attorneys with these credentials is small. On the other hand, the demand for such attorneys is high!! So, applying the law of "supply and demand," Patent Attorneys are at or near the top of attorney compensation. Also, because by definition, patentable inventions are "new," Patent Attorneys are always working with the latest discoveries, developments and inventions! If you are interested in learning more about this, let me know and we can set up some time to talk so that you will at least have good information to consider.
HERE ARE A COUPLE OF COMMON MISCONCEPTIONS REGARDING PATENTS:
- Invention need not be “Quantum Leap” in technology – in fact, most aren’t!
- No prototype need be built or tested before filing patent application.
- Most patented devices or methods have never been built or tried!
PATENT RIGHTS ARE TRICKY AND EASILY LOST!
It is relatively easy to lose patent rights (e.g., there are time bars if you publicly disclose or offer your invention for sale before you file a patent application!)! So, if you think you have a patentable invention, you should consult with a patent attorney early on. Also, remember that, as explained above, patents are legal documents. As a result, even though there are companies that advertise “do-it-yourself patenting,” my experience is that you do this at your own risk! (But, my experience is also that a collaboration between the inventor and Patent Attorney produces the best (and most cost effective!) patents!)
If you have any questions about patenting something or any other Intellectual Property issue, send me an email or give me a call. I’d be glad to help you out and get you pointed in the right direction!
Kinder Scientific Company, LLC
Kinder Scientific is celebrating its 20th year helping neuroscientists, drug and behavior researchers and safety toxicologists!!