IP Cheat Sheet: 3 Things You Need to Know about Intellectual Property
Presented by the New England Medical Innovation Center & Advance-CTR
Congratulations! You are ready to dip your toes into the commercial waters and begin the process of transforming your technology into a product or business. Not so fast. Before you do anything, there are 3 crucial things you need to know about intellectual property and talking about your idea in public realms. Take note: These tips can mean the difference between whether your innovation sinks or swims.
1. When to File a Provisional Patent Application
ASAP! We live in a “first to file” country, which means that even if you have meticulous notes and data showing you may have been the first person to conceive of your idea, you will only receive senior patent rights if you file before anyone else does. Filing a provisional patent application is the first step you take to protect your idea and can cost just a few hundred dollars. The provisional patent application will protect you for up to one year, which gives you the benefit of having “patent pending” on your idea and the ability to share your idea with others. Plus, it is easy to file additional provisional patent applications if you need more time to work on your idea.
2. Sharing Your Idea
Be very careful about sharing your idea with others until you have some level of protection in place. You can consider your research team a safe zone; however, you risk having your idea exploited by talking about it at lectures, conferences, in SBIR applications, hackathons, and other public events. It is always best to err on the side of caution and file before making any public disclosure to preserve all patent rights. Any public disclosure you make before filing can create large hurdles for you in defending your idea.
3. Who Owns Your Idea
The answer to who owns your idea will vary depending on your institution. We recommend you review your employee contract and discuss the technology transfer protocol with your institution — remember: Each organization is different. When filing a patent application, there are significant differences between who the inventor(s) are, who the applicant(s) are, and who the assignee/owner is. You may have several inventors, but the owner is the person or entity to whom rights to the patent application or patent have been assigned.
We hope that these tips are helpful as you begin the path to commercialization. Please note that these tips are for general information only and are not intended to constitute legal advice. You should contact your attorney to obtain legal advice with respect to any particular legal matter.
Helpful Links:
Please contact info@nemicenter.com with additional questions.
About Advance-CTR
Advance Clinical and Translational Research (Advance-CTR) was established in July 2016 after receiving a five-year, IDeA-CTR program award by the National Institute of General Medical Sciences. Advance-CTR is a partnership between Brown University, The University of Rhode Island, Care New England, Lifespan, Providence VA Medical Center and the Rhode Island Quality Institute. It serves as a central hub to support and educate clinical and translational researchers in Rhode Island.
Advance-CTR works to support researchers at the state level by developing the infrastructure and resources investigators need to conduct clinical and translational research in Rhode Island. Through its interdisciplinary and inter-institutional model, Advance-CTR funds and supports research across the translational science spectrum, including basic science, clinical, and public health efforts. Ultimately, Advance-CTR seeks to connect researchers and support institutions in Rhode Island in order to advance clinical and translational research that improves public health in the state.
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