Introduction
Myths about academic patenting
Reasons to patent
Importance of patent attorneys


Introduction

While the importance of patenting in various industrial fields is obvious to many, the significance of academic patenting remains more elusive. In academia, the focus has traditionally been on scientific publications, preferably in high-ranking journals. Patents have often been viewed almost as a nuisance, a document that describes research in an unusual and sometimes complicated manner. But as academic research scientists are now increasingly realising, there is a lot to be said for patenting academic research.

A common misconception is that patenting is more or less equivalent to a scientist sitting alone in a corner with their research and refusing to share it with anyone. This is not the case. First, when a party files a patent application, the application will be made publicly available 18 months after filing, and it may thus reach a group of readers that may well be complementary to that of high-ranking journals. Second, a patent can be seen as both a legal document and a scientific publication. On the one hand, the patent gives the owner the territorial, time-limited right to exclude others from gaining from the invention. On the other hand, the patent gives a detailed presentation of an invention in the form of a product, a process and/or a use, and it should include an enabling disclosure, meaning that it should be written so that the invention can be reproduced.

It is also worth noting that patenting does not exclude others from performing further academic research on the subject. The so-called "research exemption" states that research for strictly academic purposes is not an act of infringement – patent laws exist only to prevent others from commercial utilisation. Parties can also choose to patent and publish. During the past 30 years, there has been a sharp increase in academic patenting. The procedure is easy: first, a party files a patent application. Then, before the application is made public, the party submits its manuscript to a journal, the aim being to have it published.

Myths about academic patenting

Myths about academic patenting are stubborn. But while their stubbornness may have earned them at least one review article,(1) the mere fact that they have been around for a long time does not mean that there is much substance to them. In fact, quite the opposite is true.

One well-known myth is that patenting has a negative impact on scientific publication. However, several studies have shown that academic research scientists typically produce more and higher quality articles after patenting.(2) Further, patenting tends to be linked to industrial funding, which in itself has a positive effect on the number of articles.

Another myth is that academic research scientists produce lower quality patents, while a third myth claims that patenting has a negative impact on the type of research activities, resulting in less fundamental research. However, research has shown that neither of these myths are true either, and that the type of research is unaffected.(3)

Reasons to patent

Even if the myths are untrue, what are the advantages of patenting inventions rather than publishing them as scientific publications? The aim of this article is not to say that parties should patent everything, all the time – this would be a significant waste of time and money. What could, on the other hand, be beneficial, is to sometimes consider it – and even better, to have some sort of strategy or plan relating to intellectual property.

One reason why parties should consider patenting is, of course, money. A patent or a patent portfolio may be a good source of income, representing an often-welcome addition to more conventional sources of academic funding. If a party wants to move on to explore a new idea, it need not work with the invention itself in order to make money from it: the patent or parts thereof could be licensed to another party. For many funds and investors, some minimum IP protection in the form of a patent application, sometimes also a so-called "freedom-to-operate" analysis, is an absolute necessity.

Recent trends show that industry, particularly the pharmaceutical industry, looks to academic institutions when it comes to pipeline research.(4) Another interesting trend is shown in Figure 1.(5)

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Figure 1: change in market value in response to change in stock

Figure 1 shows that in the 1980s, publishing one article would increase a company's market value by more than $600,000. Two decades later, publishing an article would decrease it by $500,000. For patents, the opposite is true, albeit on a smaller scale. When seeing these two trends together, it is no surprise that there is increasing competition for IP rights. There is no doubt that patents from academia can be important and valuable.

Another reason to consider patenting is for personal incentive. If a party wants its research to reach the public in the form of some sort of product, it may need financial support from an industry partner, and then intellectual property is key. Without patents, there would be no drug development.(6) The same is true for many other industries too. Further, the patent system in most countries is based on the principle of first to file, meaning that if two parties come up with the same idea independently, the right to a patent belongs to the party that first files a patent application. So by protecting its invention, a party is also preventing others from patenting it if they come up with the same idea later. For parties thinking about having a little start-up business on the side, intellectual property is once again key.

Importance of patent attorneys

In academia, most people tend to be familiar with the "do it yourself" approach. While this approach can be both useful and fruitful in many situations, it is not a wise choice when it comes to patenting. Mastering the art of writing a good, solid patent application – one that protects the invention in the best way possible, that goes on to become a granted patent, and that holds after possible attacks by others – takes training and experience in addition to knowledge of the scientific field. Parties should find a suitable patent attorney that to make sure that their invention gets the protection that it deserves.

For further information on this topic please contact Alexander Bjørnå at Bryn Aarflot by telephone (+47 46 90 30 00) or email ([email protected]). The Bryn Aarflot website can be accessed at baa.no.

This article was written by Hanne Bonge-Hansen.

Endnotes

(1) J Intell, Capital, 2008, 9(2), 246.

(2) Ibid.

(3) Ibid.

(4) Cold Spring Harb Perspect Med, 2015, 5(3), a021014.

(5) Figure from Nature, 2017, 552, S10.

(6) Cold Spring Harb Perspect Med, 2015, 5(3), a021014.