Your source for expert commentary on IP management issues.
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Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
This section approaches questions of inventorship and how to document and disclose inventions in order
to support applications for intellectual property protection. This section will give you most of what you
need to understand about intellectual property as a scientist.
Key Implications and Best Practices: Section 8
- IP management is an important element in facilitating the translation of research into useful products or services that benefit your community and country.
- Encourage your technology transfer office (TTO) to organize occasional seminars on the basics of IP management. Ideally, your institution should provide an IP management primer when you join the institution that will help you understand the basic elements of IP protection and smooth the interface with your TTO. Even if you have taken such primers or seminars before, attend those offered by your new employer and encourage those in your group to do so as well. This will facilitate communication with your TTO staff and answer your questions about IP management.
- One potentially controversial issue faced by many TTOs involves keeping laboratory notebooks. For private sector R&D centers, this is done as a matter of routine. Make it a habit to use laboratory notebooks, as doing so can lead to better science and easier invention disclosures and can facilitate patent applications.
- Good practices in laboratory notebook keeping should include the signing of each page by a supervising scientist, occasional spot checks, and the setting aside of time for recording experiments and results. This applies to research assistants, students, post docs, and everyone else working in a laboratory.
- Good record keeping is important. It includes linking research proposals with material transfer agreements, publications, invention disclosures, and so forth. It promotes both scientific goals (it facilitates the writing of publications and grant proposals) and legal goals (good records make it easier to obtain and defend patents).
- Good record keeping goes beyond publications and IP management. Especially in institutions dealing with the development of products and clinical trials in health, or biosafety research in agriculture, record keeping may be essential for providing regulators the necessary evidence that good laboratory practices have been followed and may underpin regulatory filings. In many cases, experiments conducted years before regulatory filings can become valuable for those filings and, unless laboratory detailed notebooks were kept, experiments may have to be repeated at great cost and may also delay filings.
- Invention disclosures are the first step in protecting intellectual property. Disclose early and often. Rather than wait until your scientific paper is accepted, make it a habit every few months to think what might be disclosed and what should be disclosed, and then disclose it. But expect only a small portion of your invention disclosures to lead to patent applications.
- recognize when you actually have an invention. Often, it is much earlier than you think. By filing an invention disclosure with your TTO, you are initiating a dialogue. Even if the TTO does not immediately file a patent based on your first invention disclosure, it is a process that has started, and follow-up invention disclosures will be much easier.
- Ideally, you should invite your TTO liaison to visit your laboratory occasionally and discuss with you and your research team what you have been doing. Discussions with technology transfer experts, especially patent attorneys, can help you to identify inventions.
Documentation of Inventions
by W. Mark Crowell
How to Start–and Keep–a Laboratory Notebook: Policy and Practical Guidelines
by Jennifer A. Thomson
Introduction to IP Issues In the University Setting: A Primer for Scientists
by Martha Mutschler, Gregory D. Graff
Invention Disclosures and the Role of Inventors
by David R. McGee