How to get research patented: a quick guide for academic researchers

IN-PART understands the passion researchers share in ensuring their innovations can meaningfully benefit the world as quickly as possible. To do so, forging relationships between academia and industry is crucial, and is at the core of IN-PART’s purpose. That’s why understanding the necessity of protecting Intellectual Property, its role in research commercialisation, and the process to get research patented has never been more vital to pioneering sciences.

Now, don’t be alarmed. Academics can certainly be forgiven for not instinctively knowing how to navigate the complex ins and outs of patenting Intellectual Property (IP)! So, to give you the smoothest start to this process, our quick guide will demystify the steps required to get research patented.

To illustrate, we will follow the hypothetical journey of ‘Professor Arshad’ and her team, acting as a clear example for any academic translating their research to the industrial stage – as they seek to patent her unique biotech solar cell design and proprietary means of energy storage, this will enable us to explore the patenting process from both a life and physical science perspective.

Why do academics need to get research patented?

‘So, why get research patented at all?’

Well, to ensure Professor Arshad’s IP is legally safeguarded and distinguishable from others, a research patent is required; this eliminates the potential for contenders to recreate, distribute, and import her innovation by granting her legal ownership.

‘Great, when should I consider this?’

As soon as possible.

The fragility of patentability is high. For instance, if Professor Arshad were to even discuss her IP with a colleague over a Starbucks, patentability is threatened. In principle, if IP is discussed publicly, patentability is forfeited. So, the moment she and her team determine that her discoveries meet the criteria for patent eligibility (i.e. novel, innovative and industrially utilisable) then they should consider kick-starting their IP patenting journey post-haste!

Research patenting not only safeguards Professor Arshad and her team’s time, effort, and resources during further development, but it increases the likelihood of funding and investment.

‘Wait, how can research patents generate funding?’’

Securing a patent is a beacon to potential investors and industry collaborators that Professor Arshad’s research warrants creative protection. What if her energy storage units are physically demonstrable to investors, but her solar cell design is yet to materialise? Lighting the fuse on patenting is a credibility-infused backbone in establishing commercial viability to benefactors.

It provides a firm foundation to begin drafting a Non-Disclosure Agreement (NDA). These are contracts that can legally outline what can and cannot be shared about potential future results. In short, the potential in what Professor Arshad’s cell design could become would be more adequately protected.

Now, there are select circumstances in which patenting may not be ideal. Filing for a research patent would mean that Arshad and her team’s IP is no longer secret. Despite the patent process being key to providing legal protection, this is in exchange for an IP’s anonymity – once the filing process begins, an IP’s specifications become visible to the public, which could provoke the creation of diverse enough copies from potential competitors.

So, Professor Arshad and her team would need to consider the following:

• Whether the IP were easy to keep secret (i.e. difficult to deconstruct and re-engineer).
• If its potential demand were relatively small (i.e. unlikely to make a high enough profit to warrant patent costs).
• Whether the life cycle did not have sufficient longevity.

If the above were applicable, then perhaps the patent process would not be the appropriate path for this IP.

What does the research patenting process look like for you? 

Now, Professor Arshad’s team could brave the patenting process alone, choosing to weather the torrent of factors that accompany it. Independently, they would have to conduct a comprehensive patent search to ensure her IP was actually unique (to avoid unnecessary application rejection costs). They would have to research cross-regional guidelines to establish whether the patentability of her IP is eligible from country to country. They would need to continually predict what modifications/iterations others could make to her designs that might undermine the quality of her IP’s protection by filing continuation-in part applications – the list goes on.

In a nutshell, Professor Arshad and her team attempting this independently results in more time head-scratching, and less time spent on their research passion.

‘Okay, am I alone on this?’

Thankfully not! To assist academics in navigating the complexities of patenting, Technology Transfer Offices (TTO) exist. These in-house university departments share Professor Arshad’s vision in transitioning early-stage, research-based innovations into viable products/therapeutics to improve the health and economy of both the public and global community. TTOs not only facilitate the patent process (if/when appropriate), but do the legwork in terms of fostering IP marketability and the generation of funding, leveraging the university’s relationships with existing industrial partners, and finding new ones, to maximise an IP’s commercial coverage.

Ultimately, TTOs holistically bolster commercial viability – they expand the accessibility of innovation to directly benefit the world, which in turn reimburses what will likely be government investors, and therefore the national taxpayer. What’s not to love?

How can academics get their research patented? 

Our quick step-by-step guide to the TTO patenting process is a researcher’s best friend, but for those seeking to patent independently, we’ve included some resources at the bottom of the page!

Step 1: Disclosure of potential IP

Professor Arshad’s team would need to disclose their biotech solar cell design and energy storage system via an Invention Disclosure Record (IDR), allowing her institute’s TTO department to appraise this and deem whether her IP is patentable/commercially viable. Both discoveries would have to be detailed in separate IDR forms. Although IDR forms differ depending on the institution, they’re generally similar and you can take a look at an example from the University of California, Berkeley here.

Step 2: Preliminary Evaluation & Patent Application

Professor Arshad’s IDR form is approved by her TTO, huzzah! Now, her TTO will likely file a provisional patent application, giving the office a year from the date both patents were filed to analyse the market and assess their commercial potential, whilst drafting a non-provisional application accordingly. Essentially, it’s a foot in the door, providing a more timely and cost-effective means of acquiring IP protection through ‘patent pending’ status.

Here, through diligent market research, it is decided whether Professor Arshad’s discoveries should be licensed to specific companies. Alternatively, it could be backed as their very own independent business start-up (or ‘spin-out’, as they’re often called in tech transfer circles). She would also be contacted to provide information and scientific detail concerning her inventions (e.g. drawings/schematics, description, background etc.). This is for the purpose of completing the non-provisional application. Here are further breakdowns of non-provisional US, UK and EU applications.

Step 3: Assessment of Application

Depending on the country, reviewal time for non-provisional applications differ considerably. For instance, if Professor Arshad’s application was within the UK’s Intellectual Property Office (IPO), this would likely take 4 years. However, if it were processed within the European Patent Office (EPO), this process could take between 2 to 6 years.

Meanwhile, whichever patenting body is in Professor Arshad’s region will examine whether her IP claim is valid. Consequently ensuring that no prior IP emulates her inventions. Naturally, an examiner may have objections (extending the process time), in the form of existing IP conflictions/concerns or utility queries. If this does occur, Professor Arshad’s TTO will contact her for input in preparing a response.

If the claim is allowed, then formal patent drawings/schematics are submitted to the patenting office in question for official publishing before a fee is paid.

Step 4: Ownership & IP Protection

Of course, TTOs have invested considerable resource in order to patent Professor Arshad’s work, including the commercial drivers necessary for her inventions to have a successful industry debut. Therefore, her University would retain ownership of the IP, with any commercialisation partners holding inclusive, partially exclusive or non-exclusive rights to distribute and develop her inventions.

Typically, universities and industry benefit equally. With revenue generated via Professor Arshad’s solar cells and energy storage units, her institution can help future researchers and students realise their passions to benefit society. Simultaneously, businesses that license her patents can minimise costs spent on research, better flourishing within the relevant market. Check out the success story of ‘NanoSyrinx’ for a perfect example of TTO support.

Step 5: Completion

Having established meaningful partnerships in industry with TTO support, Professor Arshad’s team see their inventions fully develop, subsequently validated on an industrial level and effectively scaled up for market deployment…

…Ultimately, her team bask in the success of their inventions, having benefitted the world with their research passion!

Conclusion

So, there you have it. With successful patenting comes the likelihood of successful commercialisation and research impact. Through successful commercialisation, the bridge between academia and industry is crossed. This leads to the tangible, life-changing applications of academic innovations, disseminated through industry to meaningfully impact the world.

TTOs prove instrumental in facilitating this transition. With IN-PART working to bridge the divide between academia and industry, we hope this guide and our platforms kick-start the journey to having your research benefit the masses!

IN-PART is dedicated to ensuring academics gain meaningful partnerships in industry – our matchmaking platform allows you to showcase your research through your TTO to find ideal industry collaborators, connecting you with R&D teams over 6000 companies working on aligned projects – all with the help of our dedicated, STEM experienced account managers.

Register for a free account to view open calls from industry seeking academic partnerships, and get in contact with your TTO to have your research showcased on our platform.

Independent Research Patenting Toolkit

Below you will find a list of resources to begin your patenting journey.

• Patent Terminology Glossary
• List of Patent Search Databases
• International Patent Filing Guidance
• UK Patent Filing
• US Patent Filing 
• EU Patent Filing

Written by Maalik Hunter. Edited by Anabel Bennett and Alex Stockham.

Copyrights reserved unless otherwise agreed – IN-PART Publishing Ltd., 2022: ‘How to get research patented: a quick guide for academic researchers’

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