Reprinted from PLOS Collections with permission.
The concepts that underpin the protection of ideas and inventions are not new; such laws have been around for several hundred years and are discussed under the broad heading of intellectual property (IP). IP is easily
Reprinted from PLOS Collections with permission.
The concepts that underpin the protection of ideas and inventions are not new; such laws have been around for several hundred years and are discussed under the broad heading of intellectual property (IP). IP is easily misunderstood, but at the same time most scientists encounter it at some point in their career, as it is a necessary feature in the commercialization of research.
The term intellectual property includes such concepts and rights as copyright, trademarks, industrial design rights, and patents. It is important to remember that IP is a tool to help your endeavors, and not a goal in itself. Having IP for its own sake is pointless. IP can be crucial in commercializing research and running a successful science-based business, but having a patent and having a successful patented product are two very different things.
Above all, IP can only work for you if you understand what it is, why you want it, and what you are going to do with it. These ten simple rules are intended to provide an overview of these issues; however, we must start with a warning. Laws relating to IP change all the time, they are complex, sometimes rather obscure, and are very different from country to country. For example, research surrounding methods of treatment by surgery and therapy and diagnostic methods are patentable in the United States, but specifically excluded from patentability in Europe. However, these boundaries seem to be shifting in both the US and Europe. In short, we are dealing with a complex and changing subject and restrict ourselves here to the guiding principles.
Rule 1: Get Professional Help
However, there is no guarantee that a patent application will become a granted patent. Indeed, at the application stage they do not even check that your description describes an invention at all. Even if you draft a description in as much detail as you would for an academic research paper and file it yourself, the prospect that it will be granted and enforceable is very low. There is skill and technique, even a language, that patent attorneys and patent agents have that allows them to describe and define inventions in the way a patent office requires. As an example, in everyday parlance, the terms “comprise” and “consist” could be considered to mean the same, whereas they have very distinct meanings in a patent application.
The dangers are possibly even greater with trademarks and registered designs (also known as “design patents”)—these are generally granted with very little examination and patent offices are often even less inclined to suggest using a patent/trademark attorney for such “simpler” rights; however, the lack of examination means the validity of such a right is uncertain and they become open to challenge.
The costs of redrafting a self-filed application are invariably higher than the costs for drafting an application from scratch, and if there has been any disclosure it will probably not be possible to re-draft. So, in summary, if you want your IP to be valuable, you should seek professional advice at an early stage.
Rule 2: Know Your (Intellectual Property) Rights
- Patents protect inventions—broadly, things that are new and not obvious—and the way they work. Sometimes this is expressed as “everything under the sun made by man”; however, there are numerous local exceptions from patentability—we touched on the complexities of methods of treatment above—but there are similar issues in relation to genes, computer programs, and business methods, for example.
- Registered designs protect the appearance of products (not the function, which is protected by patents).
- Trademarks protect brands (e.g., trade names and logos).
- Copyright protects the expression of ideas—i.e., the words you choose to use to describe your idea—not an idea itself.
Rule 3: Think about Why You Want IP (i.e., What You Will Actually Do with It)
However, in general, IP is a right to prevent other people from doing something; owning IP does not necessarily give you the right to do anything yourself.
One school of thought says that IP is only valuable if you are willing to enforce or defend it, and the cost of such an action can be prohibitive. Indeed, the business model of “patent trolls” is to purchase patents, sometimes from those who cannot afford to enforce them, not to use the invention, but just to enforce against infringing companies. On the other hand, the term “defensive IP” has been used to describe IP obtained, not to stop other people from competing, but to stop a competitor from patenting something that you may wish to use in the future. Thus a patent application may be filed, and published but allowed to lapse, with no intention of ever enforcing it, simply because the step of publication will mean that should a competitor apply to patent the same or a similar invention, the patent office will locate your application and it will anticipate the competitor's application.
Note also that while this article is titled “Ten Simple Rules to Protect Your IP”, it is important not to be too introspective and to consider other people's IP. For example, successful strategies can be built around taking exclusive licenses—licenses that exclude even the IP owner from using the IP. One tactic to improve your competitive position can be to take an exclusive license under a patent, then either expand your range to include the patented product, or continue only to sell your own product, but use the exclusive license to prevent manufacture of the other by anybody else.
Rule 4: If You Don't Protect the IP, Your Innovation Is Less Likely to Happen
The reason is economic: mo