Business of science: How to register a patent

Adam Levy: 0:06

Hello, I'm Adam levy and this is Working Scientist a Nature Careers podcast.

In this six part series Business of Science, we're investigating how scientists can commercialize their research.

Last week, we looked at those crucial first steps of building a living, thriving startup, from knowing your ideas are worth you investing all this effort in, to convincing others that your idea is worth investing their money in.

But this is only the very beginning of the journey. Once the convincing is under way there's a slew of technical matters to consider.

And these are a very different type of technical problem than what you may have come across during research.

Here is Wei Wiu, a science entrepreneur based in Germany, who we heard from in the last episode,

Wei Wiu 1:02

It's not enough to only be research people to commercialize something, because you have to also have the economic people. You have to have somebody who knows all the laws involved in this. And especially in Germany, there are so many laws regarding taxes, for example,

Adam Levy: 1.20

Wei is chief operating officer, COO, at Helio heat commercializing a solar power technology she worked on during her PhD.

Throughout this series, we'll be hearing the experiences of scientists who've gone commercial, like Wei, as well as experts giving their tips on all the steps along the way.

Perhaps one of the most crucial yet complex steps is the patent. Patents give that seal of approval that your product is a true innovation. And that reassurance that the innovation is your property.

Javier Garcia Martinez is founder of Rive technology, which uses nanotechnology to improve catalysts.

And for him, receiving a patent felt like a momentous occasion.

Javier Garcia Martinez: 2.03

To get your first start is an amazing feeling because you realize that you have made something with practical usage. I mean, it's going to be used. It was an US patent. So I remember that piece of paper with a golden seal and a red ribbon is a beautiful document and a feeling of achievement

Adam Levy: 2.26

Javier is not alone in seeing landing your first patent as a special moment in your career,

Patrick Anquetil moved from Paris to the United States, where he shifted his career from the academic to the business world.

Now he is founder and CEO of bioengineering company Portal Instruments, producing a needle free technology for the injection of medications.

He had an almost mythical idea of what a patent meant.

Patrick Anquetil: 2.54

The way a patent is described in France is well, you know, it's almost like an act of God, you know. Someone had an inspiration. And it's basically, you know, it's just a one of a kind thing.

And what you learn, actually, it's absolutely not the case.

Adam Levy: 3.08

In practice, having an idea that is patent-worthy, and making the claim to actually receive that patent, are somewhat more down to earth. Like everything else in a career, be that an academic or business career. There are skills and strategies involved.

Patrick Anquetil: 3.24

Really, I think, one one area that always has fascinated me, is how you construct claims, right?

What do you want to defend in that invention?

That's the number one question that you should ask when you write a patent, and how you construct claims to make them, you know, as broad as possible, but also as defensible as possible.

That to me is still, I think, I think there's something beautiful about that.

Adam Levy: 3.45

But not everything has the same significance to every business person. For Wei, who we heard from earlier, getting a patent was more a matter of bureaucracy and patience than a moment of jubilation.

Wei Wu 3:57

It is at the parent authority. And then it lies there for like, I don't know, two or three years or something. And then at the end, you get it, either the patent or not. So it's not actually a really big event for us so far.

Adan Levy: 4:11

Even if the moment wasn't such a big deal for Wei, the patent itself still was.

That's because patents do still have a great deal of significance when you're setting up your business.

Wei Wu 4:23

It is really important for investors though. That's, that's some of the main things they look in your pitch deck and also in that pitch. What is your USP and most of the time, one of your USPs should be a patent.

Adam Levy 4:38

So patents can be many things from a career highlight to a business USP, or unique selling proposition.

But what do you actually need to know about the practicalities of getting the patent?

I spoke with Tamsen Valoir, a patent lawyer at the firm Boulware & Valoir, in Houston, Texas.

Tamsen, like many of the people we're speaking to in this podcast series, made a career transition of her own. She hasn't always been in law. Her background is in molecular biology. And for Tamsen, the transition has been a positive one.

Tamsen Valoir 5:12

I had bad dreams, because I thought if I became a lawyer, people wouldn't respect me anymore.

And it turns out, that's true.

But, you know, leaving your PhD behind and doing something like law seems like I think we all think it's really such a waste.

But in fact, I get to do a lot more variety of different scientific topics now than I did as a scientist.

As a PhD, I felt like I knew more about next to nothing than anyone in the world.

But it's more satisfying to me to sort of invert that knowledge pyramid.

Adam Levy: 5:45

By inverting that knowledge pyramid, Tamsen has learned a great deal about many fields of science, as well as patent law, of course.

So when we spoke on the phone, we started at the beginning with what a patent actually is,

Tamsen Valoir 6:00

A patent is a document that gives you the legal right to exclude others from making, using, or selling, what is it whatever is covered by the claims of that patent.

There are also different kinds of patents. There are patents for designs, there are patents for plants, although that doesn't come up too often in my business.

And there are patents for what we call a utility patent in the United States.

And those cover basically any articles of manufacture and/or any methods of manufacturing.

A patent only covers the country in which it is filed. So if you want protection in countries outside of your home country, you would need to file patent applications in each country that you're interested in.

Adam Levy 6:51

How important would you say it is to get that patent for that product? For the future of a company that's starting up?

Tamsen Valoir: 7:00

For a startup, I think that patenting is very essential.

And the reason is, is that there will come a day, when you start to get funding from venture capitalists and other sources of capital.

And for them, it's going to be a check the box issue. They don't necessarily want to invest in a startup that doesn't have some kind of patent protection. That doesn't mean that your patents have to be issued, but you should at least file for them. So really pretty critical.

Adam Levy 7:28

Now I understand that the first thing to do isn't actually the full patent application itself.

Tamsen Valoir: 7:34

That's correct. In the United States, we have something called a provisional application, which only lasts for a year, and never issues into a patent, but it holds your date and gets you a sort of a starting product in the patent office.

I'm less familiar with rules outside the US.

But the reason that we have a provisional application is that most countries allow you to file first in the home country and then file internationally.

Adam Levy: 8:01

Something that is separate but overlapping with patents is the PCT. Can you explain what this actually is for and also what PCT stands for.

Tamsen Valoir: 8:12

Yeah, the PCT stands for patent cooperation treaty. It is a treaty with about 160 member countries that have signed on to. And what they have done is agree to honour a PCT application as a place holding application so that you can delay your foreign filing requirements for as much as two and a half years.

Ultimately, in the long run, it will cost more.

So if, in that year and a half, you can still only file US, it may not have been a wise choice to file PCT That said, almost all clients file PCT because they expect to have money in a year and a half.

It allows you to maintain your options for a little longer.

The disadvantage of the PCT is it's $4,000. And it never gives you a patent right? It's just a placeholder.

Adam Levy: 9:02

Now, when it comes to actually making the formal patent application, what evidence needs to be included?

Tamsen Valoir: 9:09

That will vary depending on the technology. In a technology arc, like biotech, which is difficult, you're going to need a little bit more evidence and or data.

If you're doing a simple mechanical device, you don't really need anything except good drawings. Data probably will not be required.

So it's a sliding scale, depending on how predictable the technology is.

The less predictable the technology, the more actual data and/or evidence of functionality you are going to need.

Adam Levy: 9:42

What are some common mistakes that you see being made in these applications?

Tamsen Valoir: 9:46

Mistakes and applications is not something that I can speak to. Patent lawyers write applications, and so we hope we're not making mistakes. We do make mistakes, but we don't find out about it until 10 years. later when the patent is being litigated.

But in terms of strategy, certainly there are mistakes.

And one thing that a startup will do. First of all, you should always start with a provisional application or whatever your local country equivalent of that is, because why throw away a year of free tap patent term,?

Adam Levy: 10:19

Not an application itself, but what companies or individuals failed to think about before maybe they even start speaking to a patenting lawyer,

Tamsen Valoir: 10:28

Poke around a bit, and see what patents are out there.

Find the closest prior art and have a have a read. That will give you a just a better idea of what you're up against. And it'll it'll allow you to be a little better prepared by the time you see a patent attorney. And the more prepared you are the you know, the less cost you're going to run up.

Adam Levy 10:53

Now, of course, patents don't come for free, and they don't cover all countries. How should companies weigh this balance up when choosing when and where to patent their products?

Tamsen Valoir: 11:06

Yeah, a simple rule of thumb that I usually tell clients is that a patent will cost $20,000 per country over its lifespan.

But over the lifetime, it's certainly going to add up to $20k. So you really have to think, as a startup. am I going to have that kind of money? Am I going to have $20k per country at the deadline for me to file foreign filing.

Think ahead as well, about an overall patent strategy. You do have to know the timelines a little bit to plan a strategy. And realistically estimate how much money you're going to have at the various dates, and plan your patent strategy in advance.

For example, medical devices, you may file a broad patent application at the beginning. But typically your first application won't really be that detailed, and it won't really direct to a particular medical device.

Medical devices tend to evolve fairly quickly. And if you start your patent application process, and request not to publish, you have a little bit more leeway down the road to patent, the improvements.

Adam Levy 12:22

Are there any important differences that people should be mindful of in the processes and how they differ between countries?

Tamsen Valoir: 12:31

Yeah, so I would say the most important difference has to do with prior art.

In the United States, you've always been able to do a little bit of publishing and then still file a patent application within one year. And most countries don't allow that.

So in most places, you have to file a patent application before you do anything else.

That is a common mistake that many clients make, particularly in the academic sciences, where the drive to publish is fairly high.

They will typically create their own worst prior art and very often through grant applications and/or posters done at conferences.

So I think it's important to be aware that grant applications can be obtained under the Freedom of Information Act in the United States.

And so if you're doing US grant applications, you need to designate anything technologically relevant to your patent as confidential.

So that does not go out in a Freedom of Information Act request.

And outside the US, you just want to get something on file, a patent application on file, before you do any publication,

Adam Levy: 13.45

The patent process can be pretty lengthy process. But of course, in some industries, things move incredibly quickly. For example, in tech, how should companies in these industries be thinking about patenting,

Tamsen Valoir: 13:58

There's basic technology in IT, really fundamental basic stuff that you do want to file patent applications on. And there is incremental improvements that you may just want to get out the door quickly and not file an application on because of the cost,, the $20,000 extra cost.

If you're a big company with a lot of funds, you can file patents on everything.

If you're a startup, you need to be perhaps a little more judicious in IT.

Sometimes the lesser important inventions. you just can't afford to file and so you don't. But certainly you would file on any basic fundamental technology.

Adam Levy 14:40

That was Tamsen Valoir. Now, look. All of this might sound a little overwhelming, especially if you're still an academic starting out on your business journey.

It's important to get some help. So wouldn't it be great if universities and other academic institutions had some kind of office to help you transfer your research to the commercial world?

Well, luckily, that is exactly what they have.

And in the next episode, we're going to be talking all about technology transfer offices, and how they can get you started on the journey to make business out of your research.

Don't miss that discussion. This has been Working Scientist, a Nature Careers podcast. Thanks for listening. I'm Adam. Levy