Wednesday, 9 October 2013

10 Pieces of Advice about Patents to Scientists Setting up Companies

This article highlights some of the patent issues which scientists need to consider when setting up a startup.  It is written from the perspective of a UK-based patent attorney advising a UK company.

1.       Patent applications and patents may represent a substantial portion of the value of the company.  They therefore need to be treated very seriously. Patent strategy must be developed at the earliest opportunity and constantly adapted in response to research findings and the commercial needs of the company.

2.       The inventorship of the patent application will determine who owns the rights.  Normally the rights of scientists employed by the company will go to the company.  The rights of external collaborators may go their employers.  It is important to identify all inventors and all parties that own rights in the patent application so that appropriate assignments can be executed if necessary.  Clearly the inventorship and rights in a contract research situation need to be given careful thought.

3.       An inventor is someone who contributed to the inventive concept. Even very minor contributions can make someone an inventor, and therefore there needs to be strict control of the contributions which different parties make to the research. A helpful suggestion from someone you meet at a conference could end up making them an inventor.  Invention Records should be completed for each patent application, identifying all contributions and explaining why each person is or is not an inventor.

4.       Ideally any patent applications should be filed with your company as the sole applicant, with assignments in place transferring all rights that are owned by other individuals or organisations.

5.       A roadmap of the research the company will do should be produced before collaborations are agreed with external parties.  The roadmap should identify the expected contributions of all individuals and organisations, allowing determination of the likely inventorship for each resulting patent application.  Ideally agreements should then be executed with all external parties in which they agree to assign their rights to the company.

6.       In certain territories, like the US, applicants can independently licence the rights in the application or patent.  Therefore try to avoid having joint applicants, if possible.

7.       Ideally a company should own the applications and patents that cover its technology, rather than licencing them in.  That gives you more control and is reassuring for investors.

8.       If external parties will be involved in the research, then it may be worthwhile evaluating whether you can file a patent application before their involvement.  That means they would not have a claim to inventorship or ownership for that case.

9.       Public disclosure of the research must be strictly controlled.  As well as journal publications and conference presentations, the publication of patent applications needs to be thought about carefully.

10.   Thought should always be given to due diligence of the patent portfolio occurring at some stage, and what would be expected.  It is important for patent applications and patents to be in the correct name and for it to be clear how the applicant/proprietor derives the rights from all the inventors.  If Invention Records are available it will show inventorship was thought about properly at the time patent applications were filed.

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