IP guidelines for researchers

Patenting basics for researchers

What is a patent?

A patent is a form of intellectual property (IP) where the government gives the owner a temporary monopoly to prevent others from making, using, or selling an invention. In exchange, the owner discloses how the invention works so that others can learn from the invention. A typical patent duration is 20 years.

An individual or team can apply for a patent if they invent, for example, a new device, a new therapeutic agent, a new material, a new diagnostic, or a new process. In some instances, a new use of an existing compound or apparatus or a new combination of known materials may be patentable if it is advantageous. 

Before an application for a patent is made, the invention must remain a secret. A public disclosure of the invention will, for the most part, negate the ability to gain patent protection. A disclosure can be in the form of a manuscript, thesis, oral presentation, a poster, social media post or even a discussion without a confidentiality agreement in place.

If you think your research may have a commercial application

Talk to someone from Innovate Surrey Ltd (ISL) before you make any publication or have any discussion outside of the University. This is very important as any disclosure may prevent a valid patent application. If you need to publish quickly, tell us – we understand that publication is vital to your career progression and the University’s academic standing.

However, if the invention does not fulfil all of the criteria to file a patent, there are other forms of intellectual property rights (IPR) that may be relevant to protect your creative output. These include trademarks (e.g a logo), design rights (features that appeal to and are judged by eye), copyright (e.g. software), database rights and confidential information, often referred to as “know-how”. 

If you have questions, please ask us.

Why patent?

There are multiple reasons for researchers to consider patenting the outputs from their research:

• Impact – increase the translational, societal, and economic impact of your research.
• Attract more funding – funders consider patentable and commercial outputs when assessing grant applications.
• Attract industrial partners and collaborations - a strong relationship with an industrial partner may enable your work to reach patients, end-users customers more quickly and at scale.
• Form a spinout – IP in the form of patents is often a key asset of a spinout company and are essential for providing protection against competitors.
• Generate income – Surrey has a revenue sharing policy (see the IP Code), which would benefit you financially if a patent is licensed to a company.

Misconceptions

A common misconception is that patenting means you cannot disseminate your research findings broadly for the greatest societal impact. This is not the case!  You can publish your work after you have filed a patent application.   We encourage you to do so!

Other misconceptions: 

• A patent gives you automatic rights of exploitation. This is not true – a patent may give you the right to stop others using the invention as defined in your patent claims, but you need to ensure others do not have conflicting rights (called freedom to operate (FTO)).
• A patent excludes further academic research. This is not true – crucially, patenting does not exclude others from performing further academic research on the subject. This general research exemption states that research for strictly academic purposes is not an act of infringement – the patent laws are there only to prevent others from commercial utilisation.

How do you get a granted patent?

For an invention to be patentable, the invention must meet five essential criteria: 

1. Novelty – this means that the invention must be the first of its kind and has not been described or demonstrated in any way in the public domain. This includes journal letters or articles, oral presentations or any information provided through electronic media. Presentations at internal laboratory meetings are generally OK, but if there are external collaborators present, it is essential for everyone to commit to a non-disclosure agreement (NDA) to protect any potential patents.
2. Inventive – the invention must be inventive, the solution provided is non-obvious to a skilled person in the field.  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, meet the inventive criterions.
3. Application – the invention must have an industrial application( interpreted very broadly).
4. Reproduceable – the description provided in the patent must be sufficient for a skilled person to reproduce the invention with only routine effort.  For example, a drug patent usually needs evidence of effectiveness, as well as instructions for making any novel compounds.
5. Not excluded – the invention cannot be from an excluded category. For example, mathematical methods, computer programmes (in SOME cases), artistic creations, medical treatments and diagnostic methods performed on a person or animal, and biological processes to produce plants or animals. 

The patenting process at Surrey

The patenting process can take many years to obtain a granted patent and it is important that you remain part of this process in steering the patent application in the best possible way. Working alongside your technology transfer manager, this will involve: 

• Identifying and validating the invention – describing the invention, listing the inventors/contributors and confirming ownership
• Working with ISL and a patent lawyer to draft the patent application – ISL has a panel of expert patent lawyers that we know and trust.  The University pays for the cost of patenting.
• Providing supporting evidence – this is used to answer the questions from patent examiners who assess your patent application during the patent prosecution process
• Signature of documents to enable a patent application to proceed.