Protect Your Intellectual Property as Soon as Possible
by Kyle Elliott
As momentum continues to build for research and bioscience firms in Kansas and Missouri, startup firms will begin to join more established businesses that are developing new ideas and being granted the patent rights to protect them from use by others.
Patent rights allow one person or company to exclude others from using the invention, whether it’s a new drug or a new technology. However, to qualify for a patent, the idea must not be obvious, must be useful, and cannot have been the subject of a prior transaction or disclosure.
Therefore, inventors hoping to enter the bioscience and research commercial arena need to have at least a general understanding of patent law before they announce or commercialize their new ideas.
Protecting Your Intellectual Property
In research or bioscience or any other technology area, there is one key principal—as soon as you even think an idea might be worth patenting, consider filing a patent application with the patent office.
As important as this is, sharing ideas comes naturally to inventors. Their natural inclination is to tell everyone with the hope that further advancements will arise. This is, however, exactly the wrong thing to do if the inventor or the inventor’s employer hopes to seek a patent application in the U.S. or in foreign countries.
The inventor must keep the idea quiet until developing a patent strategy. That means refraining from discussing it at a cocktail party, issuing a press release, publishing it in a research journal, offering to sell products, or using the invention for its intended purpose to benefit the public.
Before going public with the idea, the inventor and intellectual property experts need to discuss whether the idea is patentable, marketable, and how the inventor can protect it.
This process is not cheap. Depending on complexity, it can cost over $10,000 to prepare and file a patent application with the United States Patent and Trademark Office. But the inventor who skips this step and reveals the idea publicly could forever lose the right to patent protection.
Provisional patent applications defer about one-fifth of the cost because they don’t require claims. However, provisional applications must meet the same written description requirements as non-provisional applications, so those inventors who prepare a “quick and dirty” provisional have a greater risk of their patent being later declared invalid or may receive less protection than they were entitled to.
Develop a Patent Strategy Most countries grant rights to the first person to file a patent application. In the United States, patent rights are granted (though pending legislation may alter this) to the first person to invent something, and U.S. law grants inventors a grace period of a year after they first disclose an idea to apply for a patent. However, very few foreign countries have the one-year grace period.
Therefore, in today’s global marketplace, public disclosure of any kind could void the ability to get a patent in other countries, so a policy of not revealing the invention until a patent application is filed is the safest bet.
Researchers or inventors should develop a patent strategy very early in the process with someone knowledgeable about both patent law and the marketplace for new products. Some ideas require multiple patents. Some may already be claimed by another inventor. And some ideas may be patentable but simply not marketable.
Other Intellectual Property Concerns
The patent application is not the only measure startup bioscience and other firms should take. Other protections include:
> Invention assignment and trade secret agreements for all employees to assure that the company owns its employees’ inventions and to protect against ideas being stolen or revealed. > Requiring any employee conducting research to keep an inventor’s notebook with a dated and witnessed record of the work performed to develop the idea. > Fair non-compete agreements for employees may, in some situations, be the only protection that will truly protect a company’s confidential information and competitive advantage. 
Kyle Elliott heads the Intellectual Property and Technology Group at Spencer Fane Britt & Browne.
P | 816.292.8150
E | kelliott@spencerfane.com