How to License A Light Bulb Moment: A Patent Lawyer Q&A

Scientists and researchers in the biological, chemical, biotech or other science fields: Have you ever patented something? Or do you have questions about inventorship and what a patent protects?

Patent lawyers Basil S. Krikelis and Jeffrey Safran in their conversation with our team’s communications specialist, Makenzie Sisson , communications specialist, for an interview about patent law. Here’s some of their conversation:

Makenzie Sisson (MS): Introduce yourself and tell us what kind of work you do.

Basil Krikelis (BK): I’m Basil Krikelis, and I’m a partner at McCarter & English, LLP . I’ve been here for 20 years. I’m originally from Delaware and went to Brandywine High School . I am a lawyer, and I also majored in molecular biology in undergrad. Most of my clients are in the biotechnology and chemical spaces, often working with pharmaceutical and biotech companies, universities, research institutions, small startups and even individuals. Jeff and I have worked together a lot!

Jeff Safran (JS): My name is Jeff Safran, and I’ve been working at McCarter and English for six years now. My undergraduate background is in biology, and I have a PhD in biochemistry from the University of Texas. I ended up in this area after coming to do my postdoc at the University of Delaware. I decided not to stay working in science, so I went to law school. I’ve been practicing for over 20 years now.

MS: What drew you to choosing law over science?

JS: When I was getting my PhD, I attended a seminar while learning about alternative career paths. One of the panelists was a patent attorney, and it really interested me to be involved with the science but outside of the lab. In this job, I’ve been able to broaden my knowledge outside of what I studied in my PhD.

MS: How do you define a patent?

JS: A patent is a special legal document between you and a government. And I say ‘a government’ because patent laws are territorial. Just because you have a patent in the U.S. doesn't mean you’re protected elsewhere. You have to file in every other country you want to have protection in, so it ends up becoming a legal document, almost like a contract. Actually, one of the big misconceptions about patents is that it gives you the right to do or produce something. You don't actually have the right to do anything yourself. A patent just excludes others from practicing what you have claimed in that patent. A patent covers the product or the process for 20 years.

MS: What is a patent versus a trademark or copyright?

BK: A trademark is a name or logo that represents a good or service, but it has nothing to do with an action or process. It doesn’t protect the good or the service itself, but it protects the name. A copyright, on the other hand, is a registration of a written or lyrical work.

MS: How do you know when you have like an idea or a concept or an item that you could qualify as patented material?

BK: It can be anything. In most cases you have an invention, and an invention leads to a patent application. There's always going to be some kind of a light bulb moment that occurs for someone when they have something they’d like to patent.

For something to qualify as patentable, it needs to be new, useful and non-obvious to be patentable. These are the three basic cannons of patentability, and that’s where we come in.

Anyone can file a patent – it’s protected in our constitution – but it’s always a good idea to work with patent experts like us to help it get through the approval process. It is complicated to take your idea and put it into words, and that’s something you must do to navigate the U.S. patent application approval process.? It can take a few rounds of negotiating with the U.S. Patent Office to get the patent allowed and issued in the U.S.

Also, after the initial patent application has been filed, teams like ours can help you take steps to file for a patent on the same invention in other countries. That’s a big part of our job – making sure that our clients can also get their idea or process protected in other countries. Different countries have different rules and levels of rigor, which requires not only our expertise, but also the expertise of patent attorneys in those countries.

Most people are proud to have their name on a patent, and we’re fortunate to help others make that possible for themselves.

MS: Could you talk to us a little bit more about how we see this in our field?

BK: For others in the biology and biotechnology fields, for example, you might be the first to have isolated or detected a mutated gene. But in the U.S., any part of a living creatures’ body is not patentable. This can make diagnostics and disease detection difficult to patent. We can do it, but we typically have to describe how the diagnostic method is transformative in some way.

But cutting DNA as a method of repairing it? That you can patent, because now you've taken DNA and then used it for something that it wasn't intended to do.

MS: What common mistakes do you see when a scientist wants to pursue a patent?

JS: I would say the first thing is disclosure and the value of research or development. Publishing a paper or even having a poster presentation and a discussion with colleagues at a conference can potentially destroy patentability. Pharmaceutical companies rarely publish their research, and this is on purpose: They have a bunch of inventions they want to file patents on. But on the other hand, for researchers at universities, they may prioritize publishing papers and applying for grants over the patent process.

MS: What are some things that you would want people to kind of know about the process that you often kind of find yourself answering multiple times throughout?

JS: I think especially in dealing with the university side or even in a research institute like you have GEI, there is a significant difference between who gets their name as an author on a journal article and who is an inventor.

Inventorship is the key determinant in ownership for a patent. There are two concepts in determining inventorship that are that are relevant.

One is called conception: Did the person come up with the idea for the invention or any part of the invention that is eventually claimed? There's no requirement that you've made your object or performed your process. It's the idea of it that matters. The second part is called reduction to practice. It is the actual construction of the invention in physical form or, if a method, actual use of the method. These concepts came into play in the CRISPR patent battle a few years ago.

MS: If I'm a scientist and I've got something that I've invented, is it essential for me to get a patent? If I'm going to pursue it, what kind of benefits can I expect from that?

JS: It really depends on what the invention is, but is it essential to being a scientist? No. But if you do have plans to market and sell something you invented, it probably is a good idea to discuss with a patent attorney, review it and discuss it with business team. The benefit of a patent is the protection it provides. If it’s important to you to have exclusive rights around your product or process for 20 years, you should consider it. It really depends on what you're doing and what your end product or process is going to be.

BK: The benefit of a patent for companies is that if you’re building a commercial product, it keeps others from competing and gives you that ability to have that space to yourself. It's also critical, and particularly in the case of scientific startup that patents are very important for raising capital. You want investors to say, “If I put my money into this company, I know that they've done things the right way by protecting their product for themselves.”

Most people are proud to have their name on a patent, and we’re fortunate to help others make that possible for themselves.