Patently obvious? Six traps waiting for scientists who are anxious to patent their discovery…
By patent attorney, Dr Leigh Guerin.
1. The Timing Trap: file an early patent at your peril!
Scientists often rush to patent their ideas as soon as lightning strikes, unaware that early filing starts an expensive and time-sensitive clock. A 20-year-patent for instance starts the minute you file it: if it takes you another 10 years to get your idea to market, you’ve effectively lost half of any potential value. And by the way, once you’ve filed, the train has left the station and you can’t bring it back.
The key is strategic timing – or as I like to say, ‘talk early, file late’. Consult with experts early, but delay filing until you have substantial data and a clear commercial pathway for your discovery. Each year you postpone filing potentially increases the value of your patent by allowing for more research, market validation and commercial appeal.
Not unrelated, I recommend using a patent attorney as an advisor well before you use him/her to file for your patent application.
2. The Publishing Pitfall: the dilemma of disclosing too much
Academic researchers frequently fall into the trap of publishing research before securing patent protection, which can destroy the novelty and patentability of their invention. And look, we get it, the pressure to publish is intense. But once you’ve made your idea public, it’s in the public domain and can be used against your future patent applications – even though you’re the one who made it public! That’s why we recommend working with patent attorneys and/or university technology transfer offices. It really can pay to ask.
3. The Hidden Cost Iceberg: look out below!
Scientists dramatically underestimate the true cost of patent protection. A simple Australian patent can cost around $10,000 – but that can quickly escalate to $250,000 or more if you’re considering multiple jurisdictions (patents for different countries). Costs include initial preparation, filing in multiple jurisdictions and responding to patent office queries as they challenge the ‘novel’ and ‘inventive’ nature of your idea. Beware also that it’s not a one-cost solution: the patent process involves ongoing prosecution, maintenance fees and, on rare occasions, legal challenges.
4. The Collaborative Complexity: we’re all friends at the beginning…
Scientists often overlook the complexity of inventive contributions in collaborative research environments. Determining who actually invented something can be challenging, especially in team-based research. Each contributor who makes an inventive contribution potentially has legal rights to the invention. Failing to properly document and manage these contributions can lead to future legal disputes and even invalidate patent applications. Careful documentation and clear agreements about intellectual property are essential.
5. The Mistake of Thinking the Patent is the Asset: it’s not
Don’t succumb to the idea that the patent is the asset. A patent is a strategic tool in a commercialisation pathway: if you want to commercialise something, people need to invest in it; and if you want people to invest in it, then it needs to be protected and valuable.
Academics tend to be too focussed on their idea and not on its commercial application. They need to think beyond the research and consider how their invention can solve real-world problems, attract investment and generate value. Only then can a patent become a strategic asset. Safeguarding your IP can open doors to funding, partnerships and market opportunities, but it is the idea that is valuable.
6. ‘Patt-ent’ versus ‘Pay-tent’: the pitfall of mispronunciation
Only joking – there’s no right or wrong way to pronounce ‘patent’. We tend to say patt-ent in Australia, but potato/potahto…
Far better that you get your head around the fact not everything is patentable and not every innovative idea meets patent criteria. Scientists assume their breakthrough is automatically patent-worthy, but in the letter of patent law an invention must be new, non-obvious and have practical application. The bar is high and simply being novel isn’t enough. The invention must represent a significant step beyond existing knowledge, and the novelty must be demonstrable through solid data and clear differentiation from prior art.
And perhaps this is the most perilous trap of all: rushing to file a patent without having done your homework. Think beyond the research and consider how your invention can solve real-world problems, attract investment and generate value. Have your ducks – and your data – in a row. And consider patent protection as a critical component of your research strategy, not an afterthought or an administrative task.
Be clear on these things and you could save yourself a lot of headache, heartache and expense.