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Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation


Fiocruz, Brazil

bioDevelopments-   Institute

Patents and Patenting: Balancing Protection with the Public Domain
Topic Guide for Technology Transfer Managers

Why This Topic Is Important

This section provides valuable guidance on how, when, and where—and whether—to file for intellectual property protection for the best chance of success in developing that technology for real world applications.

Key Implications and Best Practices: Section 10

  • The use of IP rights is not a panacea for the management of innovation, nor is the public domain. Both public and private goods have utility and limitations. The art of innovation management is in using both public and private goods and to manage the interface between them.
  • Because public domain technologies play an important role in publicly funded research, defensive publishing can be used by public sector research institutions to help expand and reinforce the accessibility of technologies in the public domain.
  • It helps to have other tools besides patents to get technology out of the lab and into the marketplace. Consider first whether a technology requires investment by the private sector (and, thus, exclusivity) to be put into practice.
  • Defensive publishing may run contrary to your instincts if you tend to think in terms of controlling a technology by ownership (and thus excluding others from using it). Think instead in terms of maintaining control of the technology—or elements of it— by casting it into the public domain and, thereby, preventing others from owning it.
  • Researchers will need advice on how to craft defensive publications.
  • It is important to understand the advantages of provisional patent applications. They can be very useful in controlling costs and, also, in providing additional time for weighing options as to whether it is worthwhile to pursue a full patent application.
  • Delaying patent applications involves risk. Subsequent prior art that blocks an application might appear. Or, the same invention might be patented by a competitor.
  • For any invention, evaluate whether foreign patent rights are truly required. This will require a combination of business, marketing, and legal analyses.
  • When assembling a patent application, attorney costs can be reduced by providing a cohesive document containing all data and information relating to the invention, such as alternative methods, compositions and/or devices. Use attorneys, at least, to review draft patent applications and to write the all-important claims.
  • The foundation of an effective field-of-use licensing strategy is a patent application that foresees certain licensing opportunities and accommodates unforeseen opportunities. It will thus be important for your office to establish and implement strategies for patent application preparation that seek to anticipate any and all licensing opportunities that can arise from an invention.
  • It is essential to retain control of patent applications. Don’t permit a licensee to gain control; their interests and your interests are likely very different.
  • Tiered or layered IP protection strategies utilize several forms of protection for a single product or process. For example, a hybrid maize variety may be simultaneously protected by patents, trade secret, trademark, and plant variety protection.

Recommended Chapters       Show All AbstractsShow All Abstracts

Show AbstractAbstract Cost-Conscious Strategies for Patent Application Filings
by Oren Livne

Show AbstractAbstract Defensive Publishing and the Public Domain
by Sara Boettiger, Cecilia Chi-Ham

Show AbstractAbstract Deposit of Biological Materials in Support of a U.S. Patent Application
by Dennis J. Harney, Timothy B. Mcbride

Show AbstractAbstract Designing Patent Applications for Possible Field-of-Use Licensing
by Arne M. Olson

Show AbstractAbstract Filing and Defending Patents in Different Jurisdictions
by Ronald Yin, Sean Cunningham

Show AbstractAbstract Filing International Patent Applications under the Patent Cooperation Treaty (PCT): Strategies for Delaying Costs and Maximizing the Value of Your Intellectual Property Worldwide
by Anne M. Schneiderman

Show AbstractAbstract A Guide to International Patent Protection
by Ann S. Viksnins, Ann M. Mccrackin

Show AbstractAbstract The Interface of Patents with the Regulatory Drug Approval Process and How Resulting Interplay Can Affect Market Entry
by Dennis S. Fernandez, James Huie, Justin Hsu

Show AbstractAbstract Patenting Strategies: Building an IP Fortress
by John Dodds

Show AbstractAbstract Protecting New Plant Varieties through PVP: Practical Suggestions from a Plant Breeder for Plant Breeders
by William D. Pardee

Show AbstractAbstract Provisional Patent Applications: Advantages and Limitations
by Richard L. Cruz