Spinning off companies to exploit products and ideas developed at universities and research institutions can help to address societal challenges and make a real-world impact. Such moves can also be lucrative for scientists who are prepared to take their concepts into industry.
But before a company can start selling a product, it must protect its intellectual property (IP) by patenting the technology that makes it special (see ‘Glossary’).
Nature spoke to five specialists about how to get started (see also ‘Patent search tips’).
JOHN GRAY: Learn what makes your idea patentable
UK and European patent attorney, based in Glasgow, UK.
A fear of a discovery being scooped can create a race between researchers to publish their results as a peer-reviewed paper. But if there is a commercial goal in mind, patent filing should come first: patent laws generally favour whomever is first to file an application that completely discloses a fresh invention.
Researchers should keep in mind three important elements that make an idea patentable.
First, the invention must be new: the same idea can’t have been published before in any form. Publications by the inventors themselves (this would include academic papers as well as talks at scientific conferences or demonstrations to potential customers) can destroy a patent application. Presentations at internal laboratory meetings are OK, but if there are external collaborators present, it is essential for everyone to commit to a project agreement with a non-disclosure clause, to protect any potential patents.
Second, there must be some inventive step of ‘non-obviousness’. This can be hard to define and depends on the context. For example, painting a device a different colour is unlikely to be considered inventive, but a formulation of paint that dries faster, or holds its colour better under radiation, might well be.
Third, the disclosure in a patent must be sufficient for a skilled person to reproduce the invention with only routine effort. For instance, a drug patent usually needs detailed formulations and evidence of effectiveness, and instructions for making any special chemical compounds used.