The importance of protecting your IP

I recall thinking it was odd for such an innocent term to conjure an image of academic espionage. However, it became clear that while “scooping” did happen (and not infrequently) in academia, it was often just how the term looks – an innocent case of one research group working on the same problem getting their manuscript accepted a few months ahead of your own.

It is unfortunate, and can have consequences of your own manuscript getting rejected. Nevertheless, the work is often not in vain, and knowledge garnered from the competing group can lead to further breakthroughs.

Being scooped in the IP world is often far worse. For researchers navigating both the lab and the path to commercialisation, understanding this difference is crucial. Under the nearly universal “first-to-file” system whoever (lawfully) filed the application to an invention first will be the owner of that monopoly right.

Consequently, if you had already filed your own application when you find out that a third-party filed on the same invention earlier, your own application could become ungrantable or be deemed invalid. Moreover, the first patent filings in any field are often the broadest in scope, and even if you were able to narrow your own patent application so that it survives, the third-party filing may immediately present a freedom-to-operate risk for your own commercial plans.

It is clear that we should be proactive at identifying possible inventions so that applications can get filed as soon as possible. So how can we do this?

Last year my colleague Stephen Hodsdon wrote a great piece on what makes a discovery an invention. While this itself is a complex topic, a good starting point is to consider that a patentable invention normally involves a new and surprising finding that has a commercially relevant impact. To put this into the context of a proactive filing strategy, we can already consider filing an application once we have some evidence of said finding.

While academic journals can require a large quantity of supporting data for the primary finding and may even ask for additional experiments, patent applications often do not need the same level of experimental findings. In practice, the initial patent filing is often made with very preliminary data which provides at least some support for the invention. Therefore, this means we can already begin to think about protecting the IP as soon as a new finding is made in the laboratory.

There are two other important aspects of patent filings which mean that taking the filing “leap” is often less risky that it may seem.

First is the existence of a 12-month “priority” period after your first filing (often termed the “priority filing”). During this time, it is possible to file further applications to supplement the priority filing. This is often a method parties will use to include further supporting data to strength the eventual filing at the end of the priority period.

Secondly, it is also important to realise that patent applications are not usually published until 18 months after filing. Therefore, patent applications are effectively “secret” for the whole of the priority period.

This means that in the unlikely event that further data is not positive, a decision can always be made to withdraw the original application without anyone being any wiser.

One thing that all patent attorneys still have in common with their academic peers is that they love talking about science and the new discoveries researchers make every day.

If you think you’ve uncovered something novel or potentially impactful in the lab, it is worth a conversation – no matter how early-stage it may seem. Speaking with your university’s technology transfer office or a patent attorney does not commit you to filing a patent, but it can help assess whether your discovery could become a protectable asset.

By taking that first step early, you not only avoid the risk of being scooped in the IP world – you also open the door to turning research into real-world impact.