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Patent Law: What Inventors Need to Know

I started my career as a mass spectrometrist – developing synthetic routes of converting CBD to THC, bioengineering novel surfactant proteins based on Túngara frog foam proteins, developing a transdermal drug delivery system, and eventually assisting a start-up company in commercializing a rapid, portable mass spectrometer. There, I was tasked by my research advisor to draft the first patent application – he believed that the patent attorney would not understand the complexities of analytical chemistry. So, I began researching patents and patent publications and I realized that I not only had to show that the idea was novel, but also prove why that idea was valuable such that the start-up company would be able to monetize it. Patent law was (surprisingly) fascinating – and far more important than most scientists realize!

After the patent was filed and ultimately issued, and after I finished my PhD, I decided to pursue a career in patent law – as a technical specialist in my field of analytical chemistry. I began working at a law firm in Boston, which allowed me to work full-time and even paid for me to attend law school at nights such that I could graduate with a law degree to become a patent attorney. Now, I am able to use my analytical chemistry background to assist inventors in protecting their intellectual property.

So, as a PhD analytical chemist and patent attorney, I’d like to share a few key points that scientists ought to know, if they want to make the most of their innovations.

When a researcher develops a novel idea, they draft a patent application that is then submitted to a patent office, such as the United States Patent and Trademark Office (USPTO). The patent office will review the idea to determine: i) if the claims are directed to a patentable invention; for example, a new and useful process, machine, manufacture, or composition of matter, ii) that claims haven’t already been patented or described in a publication (also known as “prior art”), and iii) if, in the light of the prior art, that the claimed subject matter would not have been obvious.

Indeed, many scientists often misconstrue the term “obvious.” Often scientists believe that their idea was obvious because they are experts in the field. However, the term “obvious” does not hinge on the inventor’s experience or background. Rather, the term “obvious” is construed based on a person having ordinary skill in the art to which the claimed invention pertains. As such, a patent attorney will often extrapolate each of these ideas that an inventor states to elucidate the value of the inventor’s discoveries. Indeed, inventors – especially scientists – should be careful not to assume their ideas are obvious!  

For example, an invention harvesting session that I performed for a client resulted in identifying more than 15 potentially patentable ideas the inventor had discovered. Before the meeting, the inventor only believed that they had two or three patentable ideas. The inventors were shocked at the number of possibilities. This is very common.

Beyond inventors believing some ideas to be obvious, inventors are also confused as to the amount of detail required for a patent application and the concept that each patent application can only claim subject matter for a single invention.

The amount of detail required for a patent application is not the same level of detail for obtaining a research article. A research article requires a hypothesis, data to support or refute that hypothesis, and primary and secondary sources to support the findings. However, a patent application only requires that the patent disclose information in sufficient detail so that the one reasonably skilled in the art could make or use the claimed invention. As such, the burden is different – and inventors should be aware of that difference when considering if their inventions are patentable.

Additionally, inventors often combine numerous ideas into a single research paper, which is not necessary for drafting a patent application. Patent applications do not require that there be two or three aspects in the application. The application may include multiple novel ideas, but may be restricted to a single claimed invention by the USPTO during prosecution of the patent application. An individual looking to claim multiple ideas may incorporate numerous ideas into a single patent application; however, one or more divisional or continuation patent applications might be required.   

In short, inventors often miss patentable opportunities, which results in potential lost revenue.

What scientists need to know
 

Scientists should be aware of the current state of the industry. A scientist that is performing research will often look to scholarly research sites when identifying articles that may be similar to their research. Beyond research articles, scientists should search patent publications as well. Scientists that have an understanding of what technology is being implemented in the commercial space often have a better understanding of how their application is novel and non-obvious. By having this understanding, prosecution of their patent application(s) can become easier as benefits of the novel idea may be better articulated. Moreover, this understanding can help guide scientists in their research career as they become aware of where the current trends in the industry are headed.      

Scientists should be aware that data showing the benefits of the current technology in comparison to the conventional technology can assist during prosecution. During prosecution, examiners will often argue that the application was obvious in light of one or more references merely because they are unaware of the main focus of the application. Examiners are given little time to review the application. Having a single figure that compares one aspect of the novel idea to the conventional technology often helps show the examiner the benefits of the technology.

In addition, there are numerous legal differences across countries. And an issued patent in one country does not provide rights in another country. For this reason, many companies and universities will file applications in numerous countries where it makes sense to obtain patent rights. A patent attorney may help scientists identify these international complexities and offer advice, accordingly. 

Overall, as an analytical scientist, never assume that your research is not patentable. In my experience, researchers are prone to vastly underestimating the patentability of their work and overstating the level of detail required to make a patent application. My advice? Reach out to a patent attorney or your technology transfer office prior to disclosing it to the general public!

An Overlooked Career Path


My role today uses my analytical chemistry background to assist inventors in protecting their intellectual property. Indeed, it is a significant advantage having this background as I can talk to the inventors on a higher level than most patent attorneys.

Unfortunately, many individuals are not aware of this career option. Too often, individuals see research as their only option when graduating with a degree in a STEM field. While a career in patent law may not be for everyone, it is certainly a great option for those who have a thirst for knowledge and are excited about learning something new every day. Occasionally, I have brief moments where I reminisce about my days synthesizing molecules. However, those memories quickly evaporate when I get a new patent application directed to a novel pharmaceutical drug that might help individuals or a new polymer that can be implemented across various fields of technology. 

There aren’t many patent attorneys with a science background – especially at the PhD level – so, with the risk of adding to the competition, I’d encourage others to consider law as a potential career – one that allows you to help other scientists make the most out of their inventions.

Credit: Supplied by Author

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About the Author
Thomas D. Kiselak

Associate, Patterson and Sheridan LLP, USA

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