Universities are a major source of innovation. From new medicines and diagnostics to artificial intelligence, advanced materials and clean technologies, academic research increasingly provides the foundations for new products, licences and spin-out companies.
Turning that research into a commercial opportunity, however, creates a particular challenge. Academic researchers need to publish and share their work. Patent protection generally depends on doing the opposite – keeping an invention confidential until an appropriate patent application has been filed.
Managing that tension well can make a significant difference to the future value of an academic invention.
Publish or patent?
Academic success has traditionally depended heavily on publishing research. But a public disclosure can have serious consequences for patent protection.
A journal article is an obvious disclosure, but it is far from the only one. Conference presentations and posters, theses made publicly available, websites, preprints and discussions with people who are not under an obligation of confidentiality can all potentially disclose an invention.
Some countries provide a limited “grace period” in which an inventor can file a patent application after making a public disclosure. However, this is not a reliable basis for an international patent strategy. In many important jurisdictions, an inventor’s own pre-filing disclosure can still prevent valid patent protection being obtained.
The safest approach is therefore usually simple: identify potentially valuable inventions early and consider patent protection before publishing them.
That does not mean that every piece of academic research should be patented. Some inventions will have limited commercial potential or may be difficult to protect effectively. The important point is to make that assessment before publication removes the choice.
Filing early – but not too early
Academic inventions often reach the patent system at a much earlier stage of development than inventions created within established commercial R&D programmes.
There may be pressure to file before a paper, conference presentation or thesis becomes public, while experimental data is still limited and the ultimate commercial application remains uncertain.
Filing quickly can preserve valuable rights. Filing too early can create a different problem.
A patent application needs enough information to support the invention being claimed. It is generally not possible simply to add substantial new technical information to an existing application later. There is therefore a balance between filing early enough to avoid losing rights and waiting until there is sufficient evidence and understanding of the invention to support worthwhile patent protection.
This is one reason why early communication between researchers, technology transfer teams and patent attorneys is so valuable.
Think beyond the first patent application
The initial filing is only the beginning.
Once a first patent application has been filed, decisions will normally need to be made over the following year about international protection and the countries or regions in which protection may ultimately be required.
That period often coincides with significant changes in the commercial project. Further research may produce new data. The team may identify different applications for the technology. A commercial partner may become involved. Or plans for a university spin-out may begin to take shape.
A good patent strategy should evolve alongside these developments.
Rather than simply asking whether an invention is patentable, it is worth considering what patent protection a future business or licensee will actually need. This may include protecting the underlying platform technology, particular products or applications, improvements arising from subsequent research, or aspects of the technology that competitors would find difficult to design around.
Patents and university spin-outs
The UK university spin-out sector has changed considerably in recent years.
Spin-outs are now an established route for translating academic research into commercial products and services, alongside licensing technology to existing businesses. The UK’s 2023 Independent Review of University Spin-out Companies also led to moves towards greater consistency in areas such as university equity, licensing terms and the process of establishing new companies.
For many science and technology spin-outs, intellectual property remains one of the company’s most important early assets.
Investors will therefore want to understand not only whether patent applications have been filed, but also:
- who owns the relevant intellectual property;
- whether it has been properly assigned or licensed to the company;
- what the patent applications actually protect;
- whether important publications preceded the filings;
- whether subsequent developments have also been captured;
- where protection is being pursued; and
- whether the patent strategy supports the company’s commercial plans.
These questions are much easier to address when IP strategy has been considered throughout the development of the project rather than immediately before an investment round.
Building IP into the commercialisation process
Academic patenting will always involve constraints that are less common in conventional commercial R&D. Publication deadlines cannot simply disappear. Funding may be limited. The eventual market may still be uncertain when the first patent application needs to be filed.
But those constraints do not need to put academic inventions at a disadvantage.
The most successful approach is usually to treat IP as part of the commercialisation process from the outset. Researchers, technology transfer professionals, founders and patent advisers can then work together to identify what is genuinely valuable, decide when patent protection is justified and build a portfolio that develops with the technology and the business.
For a promising academic invention, the objective is not simply to obtain a patent. It is to create IP that helps the technology move successfully from the laboratory to the market.
J A Kemp LLP acts for clients in the USA, Europe and globally, advising on UK and European patent practice and representing them before the European Patent Office, UKIPO and Unified Patent Court. We have in-depth expertise in a wide range of technologies, including Biotech and Life Sciences, Pharmaceuticals, Software and IT, Chemistry, Electronics and Engineering and many others. See our website to find out more.
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