Practice shows that many young scientists and researchers have shallow knowledge of international patenting organizations and their regulations. Many prefer national patent offices from a financial or familiarity perspective. In many cases, some universities do have patent attorneys to directly assist the working staff and researchers once intellectual property ought to be protected. Thus, it does not seem an early interest for the majority of scientists and researchers to get acquainted with WIPO laws, intellectual property protection methods, effective patent search techniques until they achieve a patentable technical or technological solution. In conclusion, one can say that scientists/researchers are not strictly requested to know much about WIPO and national patent offices, because sooner or later they will get to know it as soon as it becomes crucial for a research process.

I'd guess the most important thing for researchers to know is that they stumbled upon an invention. Clear policies are needed and the researches should be trained how to recognize an invention.

Once they recognize they have an invention at hand, they need to contact the university or institute's Technology Transfer Office or similar department and the should handle the rest, i.e. decide whether to file a patent application, where to file, and file and handle the patenting process, including the international (PCT) application with WIPO.

Once it is decided to file an application, it is to be filed with some NATIONAL patent office. However, there is no need to file the application with the patent office in your home country, but you can use ANY national patent office of your choice.

No need to know anything about WIPO. It's local patent laws they need to know about.

Thanks, Charles.

One part of my point of view in a nutshell. The other follows in quite a few words and goes as follows.

Some knowledge of the patent process and related documents comes handy even to the most blue sky researchers. In particular at the moment they start thinking about applying for a grant connected with potential future commercialization.

The patent system (and in fact the entire realm of IP) has two quite distinct sides, one is my own IP (easy) and the other is the IP of the others (difficult). The trick is that my patent prevents the others from practicing my invention, but DOES NOT assure that I can practice my invention. My invention might be dependent on the IP of others and I may need to obtain licenses to all the background IP needed to practice my invention. If I am lucky, I can obtain the rights for a fee, but a competitor might wish to block me just by not selling the license at any cost.

If feel yourself at loss, here come two classical examples:

- Edison's incandescent light bulb - even the great Thomas Alva needed to buy previous patent to be able to practice his invention (US 0,181,613 by a Canadian inventor Henry Woodward, sold to Thomas Edison in 1879).

- Advanced reagents and parts, which may be free for internal research but require license for any other use. Internal research means strictly internal, without any monetary compensation from third parties. Thus once my institution sells a license to an IP, developed using such a reagent or component, I need to obtain the necessary licenses and patent holder is entitled to royalties.

Curious reader may wish to check the FastStart Roche taq polymerase in the Sigma Aldrich catalogue - www.sigmaaldrich.com/catalog/product/roche/ftaqro? - for the "Legal Information". Not very encouraging reading, is it?

That said it always pays off to read the legal stuff carefully and perform serious Freedom-to-Operate evaluation. Here the knowledge how to search for information in the WIPO, USPTO, and Espacenet pages comes handy.

Last but not least, though scientists usually despise the scientific content of patents, the "Examples" and "Literature Cited" parts are usually rich source of pretty useful data.

I couldn't agree more. Nothing in my short reply indicated anything else. My point is that knowledge of WIPO and its bureaucratic machinations is not needed. What's needed is a knowledge of the principles of patent law and an understanding of patent practice.

Dear Charles

With due respect just wanted to highlight that by the time one can utilize the knowledge on local patent laws he should be aware of PCT (WIPO) Filings which is very beneficial, simple, easy and economical.

Some of the advantages of PCT Filings are as under:

Ø PCT is an international treaty with more than 145 Contracting States which makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.

Ø The international search report and written opinion on the potential patentability of an invention, provides a strong basis to make important business decisions (as for example licensing) about how to proceed (like selection of countries to prosecute the case).

Ø Possibility (the optional international preliminary examination) to amend the international application, enter into dialogue with the examiner to fully argue your case and put the application in order before processing the case before various national patent Offices.

Ø Search and examination work of patent Offices in the national phase can be considerably reduced due to the already available international search report, the written opinion and, where applicable, the international preliminary report on patentability that accompany the international application.

Ø Able to fast-track examination procedures in the national phase in Contracting States that have PCT-Patent Prosecution Highway (PCT-PPH) agreements or similar arrangements.

Ø PCT application is published together with an international search report, third parties are in a better position to evaluate the potential patentability of the claimed invention.

Ø International publication online puts the world on notice of your invention which could be of great help in out licensing.

Ø If the invention appears to be not patentable at the end of the international phase, you may abandon the PCT application and you will have saved the costs you would otherwise have incurred by directly seeking protection in foreign countries, appointing local patent agents in each foreign country, preparing the necessary translations and paying the national fees.

With regards

Shaklain

Publishing research before patenting is a novelty killer. On the other hand patented inventions can be referred in publications which helps in the inventions academic publicity/marketing.

Shaklain,

no way to disagree with what you said (or to be as accurate as any patent application should be, written). The advantages of the Patent Cooperation Treaty and the PCT process could hardly be overestimated.

Yet, at the end of the day you end up with (as many as you decide to file) national patents and the associated costs (fees, translations, attorney services). For a worldwide patent with reasonable number of claims the fees (not including the attorney work) may easily climb to anything like USD 150,000.- to USD 300,000.-

However, as I understand the initial question, we are dealing with the question how much (if anything) should researches know about WIPO.

And I'd guess the answer might be as brief as this: "WIPO does exists, PCT applications do exist". The rest is better left on the Technology Transfer Office and attorneys.

On the other hand, researchers should be familiar with the basics of patent procedures, in particular what constitutes an invention, whom to inform should I stumble upon something that potentially could be an invention, what is the "life of the patent" and a few other things, including the "Freedom-to-Operate" concept.

Rgds

Michal

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

Thanks for the insight Michal,

Very mature views. Thanks for sharing.

Thank you all, fellow scientists, for the good insights.

Prof. Hess

Dear Aurelio,

I do not think that creating a patent portfolio is the best option for Universities to increase the social and private returns from public support to R&D. The patent granted is a certificate in which the competent regional authority confirms that the technical solution described in the patent application is new, is the result of an inventive activity and has industrial applicability. The rights deriving from the granted patent, the so-called prohibition right, are territorially and temporally limited.This is the main reason why the university is not able to fully exploit the potential arising from the granted patent.

To clarify this statement, I must clarify the terminology of the previous sentence teritorial and time-limited. After filing the patent application to the local patent office, you usually have 12 months to decide which national phases you want to enter. Then you can take advantage of international patent proceedings before WIPO, and extend this time up to 30 months from priority date (date of filing the first patent application). After this time, it is no longer possible to extend protection to other countries.

The applicant, who filed the patent application, must therefore begin by considering the countries in which it wishes to do business, which market is the best for it and, on the basis of this, to choose a strategy for the protection of its intellectual property. After the patent has been granted, the applicant can build his marketing on the fact that his product is new and unique. Consequently, it's easier to get investors and sell the product because potential clients appreciate how much money the applicant has invested in obtaining patent protection and there is officially guaranteed monopoly on this technology in specific countries, potentially up to 20 years. On the other hand, it does not make sense to pay maintenance patent fees in countries where the applicant did not do business. Because these maintenance charges can very quickly get ten of thousands dollars per year. And it's quite a lot of money for one technical solution that I do not even have a profit for.

Universities do not have the financial means and time to get a complete product and marketing from each patent, they do not have the means to prepare the production and distribution of the product, search for clients, and make business as you type at the beginning "to increase the social and private returns from public support to R&D". The main problem is to execute and use potential of industrial applicability of the patented technology. In practice, the university fill a national patent application, sometimes even an international patent application. After the patent is granted, University will issue a patent certificate on its websites and declare that we have the unique paper and unique technology. Then the university waits for someone to buy this paper... If it's a great technology, big companies will wait for 12 or 30 months, then is possible to see in which countries this patent is not validated, and then they start doing business with this already-published technology there. Eventually, they will wait for the University to suspend maintenance fees, and the patent will cease to be no longer valid.

Many excellent technologies developed by research workers at universities are then ending up for cheap money in the hands of commercial subjects, who are making a lot of money for it. As a result, most of the work had to be done by the inventor who had to do the research work, describe the whole patent, argue with the examiner at the patent offices and patent attorneys, with almost no reward in relating on the volume of money from the whole potential business.

The patent is great tool of marketing. But if you do not have a business plan for your product, you pay a lot of money to gain protection, and it is quite possible that the money never returns in such a way as the inventor would deserve.

So the university should do something like know-how. This is a form of intellectual property that is not published, but on the contrary, it is kept secret. The university can then publish in general terms, on what does and in what areas obtain certain "know-how". And if anyone was interested. He could buy know-how from the University, on which henceforth obtains patent protection on his own in countries where he will sell this know-how as part of his product.

Best regards,

Lukas Dreveny

Patent attorney assistant & PhD student

Dear Dr. Lukas,

It was amazing to have you here, participating on this discussion. Your invaluable orientations will be very important for many of us.

Thank you very much for such intervention!

You are always welcome to my discussions.

My best wishes.

Prof. Hess

Dear Lukas,

I like you entered the discussion and raised an important topic.

I'd guess maybe the time has come to start a project out of this discussion, with the aim to prepare a sort Q&A handbook for others. I'd guess we may include also other threads in Patent and IP (other forms of IP are also important) in it.

Anyone volunteering to manage the project?

Rgds

Michal

Dear Michal,

I really appreciate your idea about preparing a sort of handbook. I am intrested in it and I can deal with the management of that. We will keep in touch via email.

Have a nice evening.

Best regards

Lukas

Dear Aurelio,

Thank you for your positive answer. It was good to hear appreciation.

Have a nice evening,

Best regards

Lukas

Before going for publication would recommend to file at least a provisional application so that you can grab the priority over others.

Grace period of one year is given in India and USA ,while in Europe grace period of six months is allowed. Grace period herein means if you have publish something then too you can file a patent application for the same within a year time from the date of publication in India and USA. Whereas in Europe one get six months time to file the same.

Hence in this manner you will be able to publish for grant and patent for monopoly.