Patenting - Science topic

If I have an idea for a patent I will get the patent myself. Why would I want to give it to someone I don't know?

It depends what you want to do with the invention.

Publishing before you have a patent can create prior art, that makes it challenging to secure a patent. Working with a Patent Agent can help you identify if your invention is novel, and non-obvious.

Publishing your work can help to ensure others do not patent something that might prevent you from using your work if a future patent is filed on the invention.

Saleha Hafeez ,

This is something that should be discussed with a patent attorney or agent in the specific jurisdiction which you aim to submit the patent. An article that covers the particulars of protein sequences and patents can be found in link [1].

Also, even if the sequence is not patentable, its process of "construction" may be and the particular tools could also be patentable, if they are unique, novel and non obvious.

[1] https://www.nature.com/articles/nbt1198_1075

My view is that, at this point in the evolution of AI and machine learning, the derivative work is not patent eligible. if you take a look at my argument in [1]. The main point in the article is that currently, at most, AI could get a non obviousness rejection since the work can be traced to a recombination of existing elements. I build up my argument from a mathematical viewpoint and the implications for a challenge to AI inventiveness would have to be resolved by providing evidence through a discovery process. The discovery would revolve around providing further support of creativeness and autonomy.

If you want to, you can message me and we can discuss it in-depth.

References

Dear Dhanesh G. Mohan ,

Can you explain how the collaboration will be organized and carried out.

For example, if one has a design then one can send you the design where you review it, implement it and test it and give feed back to the designer such that one finally get a professional two axis tracking system.

Then the design will be patented in common with you at your university.

What is the period of this project?

My email is aaazekry@hotmail.com

Are you working also on new encapsulation technologies for solar panels?

Please inform me as I have interest in such collaboration.

Best wishes

Vrushali Lanjewar ,

the first questions to make is why get a patent? Is there a commercial application for the work? Where is the commercial venture going to succeed in terms of geographical region?

After that the next question to answer is on whether the work qualifies for a patent.This varies from jurisdiction to jurisdiction so where is the commercial venture going to succeed answer is imperative.

For example in the US jurisdiction the criteria that it needs to be an invention and not a natural process is essential. Has this invention been used, described anywhere in the world? Have you searched exhaustively to determine this originality?

After you answer these questions positively towards establishing that you have a unique invention then you can proceed with considering a patent. I strongly suggest that you contact an IP professional at this stage to get further advise.

Note: I noticed that you are a research associate at a Sant Gadge Baba Amravati University. Please make sure that you check with the University's technology transfer office on proper procedure if conducted during the normal course of your work.

Hope this helps

Yes

Anurag Anand ,

Most patent investment strategies depend on the possible market returns for the investment. The U.S. is one of the main consumers of technology so it is strategically advantageous to invest in patenting in the US. The second and third are Japan and the EU making it the patent triangle.

India is a source of talent and therefore it is also strategically advantageous to do the R&D there.

Hope this helps

Simply, it means, all kind of plants produce certain chemical compounds, which have a biological activity may it be not yet observed or already had been observed their chemical structure. After extracting one of them from the plant, researchers may change their structure by a chemical modification and obtain new compound which may have different biological activity than the initial one. In that case new compound is called semi-synthesized compound, which based obtained on the modification of natural compound. The compound may be object for protecting of intellectual property if it is not yet known for scientific society. The modification is used for reducing side effects (including toxicity) of known biological active compound or increasing its specific activity. In both cases, usually, the index of effectiveness of the biological active compound is increased.

Dear Professor Hudedmani,

The Patents Act, 1970 is the main legislation about intellectual property of India. The Chapter II of this Act prohibits patenting ideas, as can be seen from the fact that the law provides that they aren't patentable "the mere discovery of a scientific principle or the formulation of an abstract theory (...)".

More informations see: http://www.ipindia.nic.in/

I added the text of the Patents Act, 1970.

Best regards,

Professor Thiago Pires

You can use Chemical Abstract Services like Scifinder, Reaxys, STN on the web, SPRESI (Scientific Chemical Databases) and many more. Chemical Abstract Services keep track of all synthesized compounds.

Ofcourse, there are other online tools also like Chemspider, E-molecule, Chemexpert, Pub chem compound and many more.

In brief, A patent gives its owner some rights, while the inventor, is not necessarily the owner of a patent.

Thank you for sharing your experience with the USPTO, EPO, WIPO and EPO. I can only confirm this view based on my own experience.

However, I do not think my previous approach was non-business. On the contrary, if I have a great invention and I need strong protection in many countries, I have a lot of possibilities to achieve it. The timing of entry into the national and / or regional phases is quite important and should be in line with the business affiliation to which the application relates.

One option is to submit a national priority application and then you have 12 months to decide where to go. If you need more time for decision-making, you can use the PCT filing application where you can extend this time to enter the national phases for 30 months from the priority date. Another option is to enter directly into the national phases where I am applying for protection during the twelve months. Alternatively, enter the EPO, successfully terminate the procedure and then only validate in the EPC member countries.

The cost of such a patent procedure is difficult to predict and varies according to the number of countries in which protection is sought, and also by authorities you are trying to achieve it.

In this case, I think that, in order to save money during patent proceedings with national and regional authorities, it is advisable to think about where I can get a positive and quality preliminary survey. As a result, it can simplify further patent proceedings and thus reduce the costs of both the patent attorney and the utility fees.

In this way, patent agents should provide their services.

Dear Usharani,

thanks for your remark. Not many scientists are used to report the potential invention in time before they plan to publish it. The dire fact is that most of the time the space left for the TTO to prepare a patent application before the thing gets published is rather limited. The resulting patent application may then not be optimal from the point of view of coverage and potential future follow up patents.

As I mentioned previously, you are free to file with a Patent and Trademark office of your choice, including the USPTO. The US Provisional Application might give you the necessary wiggle space to prepare well thought through filing later and still have your fling date before publishing the research.

And yes, good patent is as good as a good paper, thus might be used to document your scientific proves. I'd guess the use of patents to document the scientific achievements should even be actively promoted and encouraged.

Patents of course might be cited in papers (but most scientists do not even care about including patents in their literature search), but more importantly, the scientific papers are frequently quoted in patents.

Should your paper been cited in a patent, this may serve to document your science has also practical applications.

Unfortunately, even if your paper is cited in many patents, this will not change your h-factor a bit. This is because patents are not scanned either by the Web of Science or by most other citation engines. In fact it seems there even is no reasonable tool out there to obtain the paper-in-patent citations, with the exception of one brave experiment by U. Illinois. You can try Google to get your paper-in-patents citation rate, though it may turn out quite cumbersome. Should anyone be aware of anything better, I'd be glad to hear.

Rgds

Michal

Seek quality advice from experienced professors that has published in both. If your research is unique, ground breaking and content is worth waiting for a long time then a patent is definitely worth going for. However, if time frame is of consideration or paper isn't academically and intellectually ready for patent then go for journal publication. Also define your aim. Industry employers usually place high value on patent publications.

 As Eugene Yang said, scientific principles are not patentable. Only any process / method of making something something is patentable subject to fulfilling Novelty and Obviousness criteria.

The process or method of making or manufacturing enzyme by using your formula is patentavle. you can go for that

Each patent is for 1 invention only. The later patent is called a divisional. Typically the description is identical for such patents or applications. Both may have the same description but protect different scope of invention. If you look at claim 1 for both patents you will see the differences 

Hi Everyone:

Saw this question bit late hence thought of adding into it.

Mere discovery of a scientific principle or the formulation of an abstract theory cannot be patented but application of the said principle and / or theory resulting into a novel process / product capable of industrial application could be protected under patent.

DNA sequences per se are not patent-able unless the same codes for a functional protein which evidences the innovation within it.  

Best

Shaklain Khurshid

Indian Patent Agent

You can not achieve a protection for cell line such as. In patent application you have to prove the effect of your invention. You could achieve protection on new way of cultivation or production or usage of this cell line for treatment of ... . The most popular system in  achievement the patent protection called "problem and solution". You have some problem and your invention offers a solution.  

Vishal,

A utility patent consists of three or four main parts, the abstract, the drawings, the specification, and the claims.

The abstract summarizes the idea and is a one paragraph description that can be easily referenced to assess a patent.

The specification is where the inventor teaches the world what their idea is, how it works, and why it is better than the other ideas (and novel).

The drawings are a graphical aid to explaining the idea.  Some patents have no drawings, for example chemical formula patents.

The claims are a word description of what your idea consists of.  The claims are the most important part of the patent, because the define what the idea is.

X is an independent entity so one should not be confused between FTO and patent grant. What does it mean ? Simply stated X can be granted, provided one proves novelty and inventively vs prior art. But this patent, although being granted, at the commercial exploitation stage, can "walk on the toes" of other patents (Y, Z). The FTO allows then to define to which extent X will walk on the toes and what are the risks ? To which extent your patent X, being commercially exploited, would infringe patent Y and family Z ? If so what is the strategy ? Shall you license with patent Y or Z owners ? Or shall you consider that risk of being litigated is so low that no need to sign a licence ?  

In my view, 'sustainable' refers to a process that can be carried out indefinitely, that is, there is an unlimited supply of raw materials and energy to supply the process. So the phrase 'ethically sustainable' is interesting because ethics doesn't usually deal with such quantities. It refers more to the social judgements that guide the behaviour of individuals and societies. So, are you asking whether societies are simply prepared to allow the present system of pharmaceutical patenting to continue? I  would imagine that the system has been created by governments on the advice of the pharmaceutical companies, so I would be very surprised if they were to turn round and suddenly admit that their systems were unethical and needed changing.

But governments are in a bind, too, because it can cost the best part of a $1billion to  research, develop, test, refine, retest and finally qualify some drug for human use. Who's going to pay for this unless the company has an effective patent? Should the taxpayer simply underwrite ALL pharmaceutical developments past a certain stage in return for a much more limited patent system? It's not an easy issue!

Aman,

I will try to answer each of the questions in your post:

1) How to obtain patent for my invention?

Each country has specific rules and criteria that you must meet in order to get a patent in that country. There are also special procedures such as the Patent Cooperation Treaty (PCT) which allows you to file in multiple countries 148 countries http://www.wipo.int/pct/en/ . I would strongly advise  professional advice in this matter.

2) Is my invention patentable?

Each country has different standards to meet. For example non-obviousness (US) and Inventive step(UK) are guided by different case law that may make the process more stringent in a specific area(for example, software) within that country. Seeking professional help in this regard

3) Can I file patent by myself?

The short answer is yes. The long answer is that it depends on how much time are you willing to invest on getting familiarized with patent procedures. if you are thinking of patenting in the US you can start by using as reference the book patent it yourself (http://www.nolo.com/products/patent-it-yourself-pat.html). Most people stop here but it is not enough. The book will provide enough background so that you can tackle the following references:

by Robert C. Faber

4) Any Patent help in India (Protection of Intellectual Property)? I have reached out to several IP agents and attorneys in India. If you want to I can forward the information offline(though I have only had talks with them on potential patenting of my work in India).

Although I am not a lawyer(and all actions that you take should be consulted with one), I am currently developing research and commercial software in this area and will gladly offer whatever advise I can.

In many firms, the key driver for operational excellence is "transformation through innovation”.

I found an interesting article written by Soren Kaplan entitled "How To Measure Innovation (To Get Real Results)" 

According to McKinsey, more than 70% of corporate leaders tout innovation as a top three business priority, but only 22% set innovation performance metrics.

One reason why that innovation metric gap exists is because there’s no set formula for what fuels innovation. What works for one company might be too fuzzy for the next. That said, there are a few things you can measure in order to figure out how innovative your company's culture is—it's the first step in figuring out how to reshape that environment and start promoting new behaviors.

Leadership

Percent of new innovations that come from external sources like crowdsourcing or open innovation

Percent of funding for game changers versus small tweaks to existing products or services

Percent of senior executive time focused on the future versus on daily operations

Employees

Number of ideas turned into patents by employees

Number of ideas turned into innovation experiments by employees

Number of teams that submit projects for innovation awards

Percentage of employees trained in the innovation process

Customers

Number of ideas submitted by customers through "open innovation" programs

Number of new product or service ideas that come from mining social networks

Number of customers that help test and refine new ideas

Regards

Zoheir

Depends what analysis you want to do... have a look at www.lens.org which has some interesting analysis tools.

You need to put together the money to file a decent priority patent application, probably about 1-3 K EU, drafted by a competent patent attorney (not me, I'm under a non-compete). After that you can look for partners/investors/purchasors. Don't rely on a 'home-made' (i.e. self-drafted) patent application - it usually only takes a few minutes to work out how to 'steal' such inventions without infringing - remember patent attorneys are paid to find ways past competitors' cases as well as to protect their clients cases. There is no mercy.

There are a number of aspects which you need to consider.

First of all, it is not entirely clear to me from your questoins as to whether you have already filed a patent application as a first filing or not. If you have done so, than the Paris Convention allows to file a so-called subsequent patent applications within 12 months from the first filing date. These subsequent patent applications can claim the filing date of the earlier patent application as so-called priority date, which is the relevant date for determining the relevant prior art.

In deciding which countries you want to keep open the possibility of having a granted patent right, indeed you can consider filing an international patent application under the Patent Cooperation Treaty, as suggested by Fernando Torres. This internation application postpones costs and a decision on the actual countries with one and a half years. After that period a decision must be taken, in which countries/regions you want to continue with applying for a patent.

The country decision should be made on the basis of the commercial interests of the invention. Thus, countries where you intend to manufacture or market the invention, and countries where competitors manufacture or market similar products would be important. Additionally, some patent offices have a good reputation as regards there substantive examination of patents, such as Europe and the United States. If you are successful in getting a granted patent before these patent offices, then many other small patent offices are willing to follow their decisions.

Finally, note that there is no "global patent". A patent right is always a national right and only yields protection in the countries where a granted patent is actually in force.

Three basic Criteria:

1) New: Should be completely different from prior art (should be published or disclosed ever anywhere!);

2) Non-obvious: Should be newer for the person Skilled in art as well as should be reproducible by person skilled in art;

3) Industrial Applicable: Should be useful to society/industry...

From these criteria you can definitely say that your work shouldn't published anywhere before you FILE a patent...

Usually I use both, keywords and classes. For example, it's good to start with keyword search and when you find some relevant patent, then you can use its classes. If you use keywords and classes separately, you will receive different results. But you can always combine keywords and classes. What you need to bear in mind is that there are always some patent publications that are without classes. So if you use only classification search, then you may not discover all relevant patent documents. But if you use only keyword search, then you also will not find all relevant documents because of the language you use.

In Europe, the drug (X) already known for treating a disease (Y) but found useful to treat a different disease (Z) is patentable as 'X for use in the treatment of Z'. You can get a similar scope of protection (as a 'method of treatment' claim) in the US, and if the drug needs to be formulated in a different way, you can get a claim to the new composition. If all you have found is that drug X, known to treat disease Y, works by pathway A rather than pathway B (and is administered in the same way and in the same dosage), then you are in the realm of scientific papers rather than patents. Talk to a patent attorney in one of the major cities, if you ask nicely, they will probably give you 30 minutes free advice in order to find out whether you have a valuable invention (and of course to find out whether you can pay their fees). J

Thanks for your reply.

Hi, I was working for an inventor in El Salvador, and I helped him to patent his invention. We begun from zero asking and reviewing articles about how to write, draw and follow the process of patenting. We hired a lawer that was a former examiner of the USPO and, at last, we could patent a ecological stove.

This article may help you.

Regards,

Yes, US patent numbers are assigned in chronological order with respect to the issue date. The sequence beginning with "1" was established by Patent Act of 1836. The citation is Ch. 357, 5 Stat. 117 (July 4, 1836)

I am assuming this is a search for purposes of patentability only. Do the ~500 possible compounds have a common core structure? If so, I might start with a substructure search on the CAS Registry database. That should identify any compounds known to exist which have that core structure.

A manual search of the patent art is also useful. Chemical compound patents are classified based on structure, so that a search of the relevant subclasses is often feasible. In the case of ~500 compounds, it may be difficult unless the compounds are very similar. If not, we might request that the inventor identify a smaller number of compounds to serve as the basis of the manual search. We also do keyword searching on databases such as Derwent and Espacenet.

Another possible issue might be hypothetical compounds encompassed by Markush groups described in published patents. A search for Markush structures in the prior art can also be carried out on the MARPAT database. We also review Markush structures uncovered during a manual search to see if they cover the compounds at issue.