The advantages of academic patenting

Patenting in academia

While the importance of patenting in various industrial fields is obvious to many, the significance of academic patenting remains more elusive. In academia, focus has traditionally been on scientific publications, preferably in high-ranking journals. Patents have often been viewed almost as a nuisance, a document that describes research in an unusual and sometimes complicated manner. But as more and more academic research scientists are now realising, there is a lot to be said for patenting academic research.

A common misconception is that patenting is more or less equivalent to sitting alone in a corner with your research and refusing to share it to anyone. That is not the case. First of all, when you file a patent application, the application will be made publically available 18 months after filing, and it may thus reach a group of readers that may very well be complementary to that of your favourite journal. Secondly, a patent can actually be seen as both a legal document and a scientific publication: On one side, the patent gives the owner the territorial, time-limited right to exclude others from gaining from the invention. On the other side, it gives a detailed presentation of an invention in the form of a product, a process and/or a use, and it should include an enabling disclosure, meaning that it should be written so that the invention can be reproduced.

It is also worth noting that patenting does not exclude others from performing further academic research on the subject. The so-called research exemption states that research for strictly academic purposes is not an act of infringement – the patent laws are there only to prevent others from commercial utilisation. And you can choose to patent and publish. During the last 30 years, there has been a sharp increase in academic patenting, starting in the US and spreading to Western Europe, although Norway still is a bit behind. The procedure is easy: First you file your patent application, then, before the application is made public, you submit your manuscript to a journal and hopefully have it published.

The myths are just myths

The myths about academic patenting are stubborn. But while their stubbornness may have earned them at least one review article,1 the mere fact that they have been around for a long time does not mean that there is much substance to them. In fact, quite the opposite is true. One well-known myth has it that patenting has a negative impact on scientific publication. This myth is most definitely untrue – several studies have shown that academic research scientists typically produce more and higher quality articles after patenting.[1] Further, patenting tends to be linked to industrial funding, which in itself has a positive effect on the number of articles. Another myth has it, for some reason, that academic research scientists produce lower quality patents. Unsurprisingly, this too has been shown not to be true.[1] A third one claims that patenting has a negative impact on the type of research activities, resulting in less fundamental research. The studies that have been performed indicate that this is not true either, and that the type of research is not affected.[1] So call it myth-busting or call it research – any which way, all three of the main myths have been shown to be unsubstantiated.

Reasons to patent

But even if the myths are untrue, why would you want to patent your inventions rather than publish them as scientific publications? First, an important point: The aim of this article is not to try to tell you that you should patent everything, all the time. That would be a colossal waste of time and money. What could, on the other hand, be very beneficial, is to sometimes consider it – and even better, to have some sort of strategy or plan related to IP. On to the reasons:

One reason why you should consider patenting is of course that one annoying little thing that most of us cannot afford to ignore: Money. A patent or a patent portfolio may be a good source of income, representing an often very welcome addition to more conventional sources of academic funding. And if you want to move on to explore your next idea, you don’t even necessarily need to work with the invention yourself in order to make money from it; the patent or parts of it could be licensed to someone else. In the US, increasingly more research groups are funded in part by licensing revenue, and partnerships between pharmaceutical companies and academic institutions have involved multiyear collaborations providing several million dollars of research support for the academic partner.[2] Further, for many funds and investors, some minimum protection of IP in the form of a patent application, sometimes also a so-called Freedom To Operate analysis, is an absolute necessity.

A trend recently is that the industry, particularly pharmaceutical industry, looks to academic institutions when it comes to pipeline research.2 Another interesting trend is shown in the graph below, borrowed from Nature.[3]

Figure from Nature 2017, 552, S10

As illustrated in the graph, in the 1980s, publishing one article would increase a company’s market value by more than 600 000 USD. Two decades later, publishing an article would decrease it by 500 000 USD. For patents, the opposite is true, albeit on a smaller scale. When seeing these two trends together, it is no surprise that there is an increasing competition for IP rights. Now is the time for academia to claim their part! There is no doubt that patents from academia can be important and valuable: The Harvard OncoMouse patent is well known,[4] and Stanford’s Cohen-Boyer patents on recombinant DNA were part of the very beginning of the biotech era and generated more than 250 million dollars in licensing revenue.[2]

«Now is the time for academia to claim their part»

Another reason to consider patenting is the personal incentive. If you want your research to reach the public in the form of some sort of product, you may need financial support from an industry partner – and then IP is key. As a senior counsellor in Legemiddelindustrien explained in an interview[5]: without patents, there would be no drug development. The same is true for many other industries too. Further, the patent system in most countries is based on the principle of first to file, meaning that if two people come up with the same idea independently, the right to a patent belongs to the person who first files a patent application. So by protecting your invention, you are also preventing others from patenting it if they come up with the same idea later – you are making sure that your invention remains yours. And if you are thinking about having a little start-up business on the side, IP is once again key. Roy Larsen, one of the founders of the former biotech start-up Algeta, was once asked in an interview what is the most important thing for new start-ups. His answer: “To get a patent early.”[6]

Don’t DIY

In academia, most people tend to be very familiar with the DIY – Do It Yourself – approach. While this approach can be both useful and fruitful in many situations, it is not a wise choice when it comes to patenting. Mastering the art of writing a good, solid patent application – one that protects your invention in the best way possible, that goes on to become a granted patent, and that holds after possible attacks by others – takes training and experience in addition to knowledge of the scientific field. So you should make sure that you find a patent attorney that you like working with – via your TTO or not – so that you together can make sure that your invention gets the protection that it deserves.

Now is definitely the time for the Norwegian academic researchers to follow in the footsteps of many other countries, and start considering patenting alongside publishing. Personally, I certainly hope this will happen – I think the benefits may be considerable. If you work in the academia and would like advice on possibly patenting an invention, or just to share your thoughts on the subject, do feel free to email on mail@baa.no.

References

1. J. Intell. Capital 2008, 9(2), 246

2. Cold Spring Harb Perspect Med. 2015, 5(3), a021014

3. Nature 2017, 552, S10

4. https://en.wikipedia.org/wiki/Oncomouse

5. https://www.lmi.no/2018/09/10/patenter-en-viktig-forutsetning/

6. https://www.uniforum.uio.no/nyheter/2014/08/veien-til-milliardsuksessen-algeta.html