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PBL Guide to Patenting

Guide for Inventors

We will need from you information in a form that will help us efficiently (for you and for us) to prepare a patent application.

(i) Title Of Invention

Give a title to the invention. It should be brief, descriptive and accurate.

(ii) Background

Indicate the technical/scientific area to which the invention relates and discuss the state of the background knowledge published by yourself or other researchers in the field (so called "prior art") of which you are aware. Do not try to conceal anything that indicates that others are working in the same area or that there has been some disclosure emanating from your laboratory. Concealment of relevant information could have serious repercussions later on, which could result in the invalidation of granted patent rights.

Provide where possible scientific (or patent) references to support the statements. Please provide concise explanations of specialised terminology as appropriate. It is important to explain the nature of problems, shortcomings or disadvantages with technology existing prior to the creation of "your invention".

(iii) Summary Of The Invention And Its Purpose

Not every scientific discovery will lead to a patentable invention. An invention is something that provides some useful, technical effect, something that is of use in industry, eg, creates an advantage; increased efficiency; or overcomes a pre-existing problem. The technical contribution made by the research work done and the results achieved needs to be clear.

To this end, please provide a brief and fairly general description of the invention itself. Then describe the objectives/purpose that the invention sets out to achieve and describe in general terms those particular features of the invention that are essential for the objectives to be reached. Comparison should be made with the prior art (discussed under 2 above). It is worth bearing in mind that the "objectives" of the invention for commercial exploitation may not necessarily be the same reasons you studied this topic in the first place!

In particular, it is important to explain advantages associated with each feature or combination of features of the invention and in what way problems, shortcomings or disadvantages of the prior art are solved or improved upon. Anything surprising or unexpected should be emphasised.

To be patentable, it is not enough for an invention to be new. It must also be inventive ("involve an inventive step"), that is, not be obvious to an ordinary person skilled in the relevant scientific field who is familiar with the prior art. Advantages, unexpected results, a solution to a long-felt problem, a novel and inventive idea (backed up with technical results as outlined above) are all examples of things that can give an invention the required "inventive step". Foundation for future arguments with patent offices on patentability must be incorporated in the first application document.

List and discuss as many applications of the invention that you can think of, including both applications that can be achieved now and those that might be achievable with further work. Explain how the work to date would have to be modified for the various applications.

Be sure to discuss all the different ways of achieving a particular application of the invention. If the patent is restricted to only one way of doing something, competitors are likely to find an alternative. Be creative and not afraid to speculate beyond what you would normally feel comfortable with in drafting a paper for submission to a scientific journal. Such speculations will not necessarily be incorporated in the application but may assist us in forming a strategy for protecting your invention.

(iv) Specific Description Of The Invention

Following the general description of the invention and its purpose and applications, explain what has actually been done, giving full details of the work done, the results generated and the full experimental protocols used. For standard techniques used, reference can be made to published texts. Results should include data, diagrams and tables, eg, any nucleotide sequences etc, and any functional or phenotypic data that supports an industrial utility (eg, proof of disease resistance in one or more plant species against one or more pathogens; ripening characteristics; effect on flowering; gene expression data etc). Figures are helpful and should be accompanied by a legend. Nucleotide and/or amino acid sequence data in particular MUST be accurate and should be provided in electronic form. Any subsequent corrections to sequence data must be advised immediately. Please provide full references of any cited publications.

The granting of a patent is one half of a "bargain" an applicant makes with the Patent Office (representing the State). In return for being granted a right to stop others from using the invention, the applicant must provide an "enabling disclosure", that is sufficient information with enough clarity to enable any person (or team of persons) of ordinary skill in the relevant scientific field to put into practice the invention. The absence of a fully enabling disclosure can be reason for invalidating the scope of the claims of a granted patent.

Accordingly, and in contrast with the approach sometimes taken with scientific journal publications, nothing should be held back which any person (or team) skilled in the relevant field would need to know in order to work the invention. Furthermore, the best way known to you for practising the invention should be included.

(v) Further Work

Explain any further work that is ongoing or proposed, and indicate when useful results are expected. Also explain any work which is not planned at present but which would, ideally, be required to demonstrate practicality of proposals made above.

It is extremely valuable not just for obtaining good patent protection, but also for supporting efforts to commercialise your invention, if there is at least some ongoing further work planned, and that the inventors and other key contributors to the invention are available, accessible and willing to cooperate in the patent and technology transfer process.

(vi) Contributors To The Invention

List everybody who has made a contribution to the invention, by way of ideas or hand-on work, and the precise nature of each person’s contribution.

Not everybody listed here may be an inventor in the legal sense, even though they might all be listed as authors on a scientific publication. An inventor is an actual deviser of the invention, someone who has had an intellectual contribution to the invention. Those who have acted simply as a "pair of hands" are not inventors. Determination of inventorship is quite technical and will be assessed in discussion with our patent attorney. Failure to identify the correct inventors or all the inventors may result in the patent being invalidated, so it is extremely important to assess inventorship fully and honestly.

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