A recent article in the prestigious science journal, Nature Biotechnology, argues that implementation of intellectual property education in academic institutions can result in increased opportunities for IP protection and limit exorbitant costs. It should be part of institutional training.
The article titled, Intellectual property training should be embedded in the biomedical education process, states “Even though most patents at academic institutions come from science-based (biomedical and engineering) programs, the curriculum that is geared towards patent writing is traditionally found within law and policy-based programs.
“We propose the development of a standardized lesson plan that can be implemented in academic institutions to increase patent filing volume without putting all of the drafting burden on the TTO [Technology Transfer Office] and affiliated legal parties.”
Standardized Lesson Plan
The co-authors, researchers Randal A. Serafini (Mount Sinai School of Medicine), Micaila D.E. Curtis (Georgetown) and Stella Alimperti (Georgetown), say the curriculum, which could be adapted from available information provided by the USPTO, can be provided to new investigators and trainees, which will enable the drafting of provisional patents by trainees and investigators.
“Universities advertise ‘student entrepreneurship’ as a key component of many programs, yet academic institutions do not incorporate one of the most important entrepreneurial skill sets into their curriculum — knowledge of how to protect IP.”
Using an inventor-drafted document as a foundation for provisional or nonprovisional filings, states the article, has the potential to incur fewer legal hours, avoid misunderstandings of the invention and create more ideas for protectable claims.
“This approach,” say the article’s authors, “could reduce the chances of accidental public disclosure before protection, such as poster presentations or papers.”
“Universities advertise ‘student entrepreneurship’ as a key component of many programs, yet academic institutions do not incorporate one of the most important entrepreneurial skill sets into their curriculum — knowledge of how to protect IP.”
The authors say there is virtually “no downside to further educating investigators and trainees on the patenting process, from an institutional and national perspective…”
“Implementation of such programs can increase the volume of patentable inventions, 
educate investigators about the financial benefits and necessity of patents for technology commercialization, and delegitimize the excuse of having an under-resourced TTO as a reason for institutions not regularly protecting innovations.
Patent Strategy
One problem that TTOs and lawyers may have with researchers filing provisional patents on their own is the scope of the initial claims. Too broad can be as damaging as too narrow. They may also want to weigh in about which inventions are most most viable for the institution, versus filing what investigators believe are important.
Fast-moving researchers may wish to use provisional patent applications to protect information to be disclosed in a paper, poster session or other document may wish to present.
Knowing what to disclose about a wouldbe invention and when is sometimes more high art than science. Training willing researchers about IP rights is a terrific idea that is healthy in many ways. It must, however, take into consideration the subtleties of patent filing and portfolio management, which can take time to master.
The Nature Biotechnology article was published in December 2024. It can be found here.
Image source: biomedicalodyssey.blogs.hopkinsmedicine.org/; nature.com/nbt/
ipcloseup.com 