A patent is a powerful form of intellectual property that has very strong legal rights attached to it.

At its core, it is a negative legal right granted by individual states to an inventor, who in return, must disclose to the world how his invention works (hence it is not in conflict with the publication needs of academic institutions).

Specifically, it prevents 3rd parties from commercially using the invention as claimed in the patent, unless the patent owner explicitly allows it. It is important to remember that having a granted patent does not automatically allows one to practice his/her invention freely; this will depend on the breadth and strength of the patent at hand, and whether the technology/product based on the invention actually falls under the scope of 3rd party patents or not.

If it does, the explicit consent of the party owning such relevant patent will be needed. It is also very important to know that the rights attached to a patent are not automatically enforced, but rather, the owner of the patent has the responsibility, if it wishes, to enforce the rights attached to it by suing those parties it believes infringe on the patent.

Patents are useful to protect not only one’s past investment in the research that led to the invention but also future investments while developing and validating the invention it towards commercialisation. Alternatively, patents can be licensed to 3rd parties to allow them to develop the technology around the invention to the commercial stage.

Universities typically engage only in licensing patents and other forms of intellectual property to external companies. In some cases, a start-up company may be created specifically to exploit a piece of university intellectual property; the university will then license its patent/intellectual property to that start-up company.

What makes an invention patentable?

There are three criteria required to make an invention patentable:

1. Novelty: Has the invention as a whole or its essence previously been made public (e.g. publication, talk, website posting, aural disclosure, etc)? If yes, the invention is not considered novel and is not patentable any longer; it is as simple as that. This is why it is of paramount importance to consult with the Technology Transfer team, business development or commercialisation manager prior to publishing/disclosing results to the public.
2. Inventiveness: For an invention to be inventive, one has to demonstrate that it contains an inventive step compared to the existing prior art at the time of filing. Such inventive step does not need to be Nobel Prize calibre in terms of science, but rather unexpected-enough based on the state-of-the-art knowledge in the field of the invention at the date of filing. In patent language, one talks of an invention being inventive if it is “not obvious to one reasonably skilled in the art”. In practice, if someone (say a patent examiner in the US Patent Office) can demonstrate that, by combining the knowledge from two separate pieces of prior art, one can rationally arrive at the same invention as yours, than your invention would be deemed “obvious”. The true uniqueness and subtleties of your invention, the abstraction and communication skills of the inventor(s) and the skills of the person drafting the patent application are key parameters influencing the probability.
3. Utility: Finally, and most importantly, the invention must have some practical utility. This is usually not a difficult case to make, but can present some challenges when it comes to software-related inventions.

A patent’s front page contains information such as the patent number, the names of inventors, the name of owners, date of priority (from which the legal rights start), and usually contains an abstract, summarising the invention.

The main body of a patent contains figures and their explanations, which pictorially describe key elements of the invention and data proving its efficacy, a section describing the background to the invention (what problem is being resolved, what other unsatisfactory solutions may already exist, and why it is important to find a better solution), followed by a summary of the invention (in greater detail than in the abstract).

A detailed description of the invention then follows, and typically includes a detailed description of experiments that demonstrate how to make the invention work. Finally a number of so-called claims are listed. 

The part of a patent that is most important and provides legal and commercial protection is the claims of the invention. A patent application typically contains a series of claims, which describe in detail what the invention is, how it works, its scope and limits. This can be composition-of-matters claims, methods for making things, the specific use of a material to achieve certain functions, series of steps to be undertaken to provide a certain outcome, a new use for a known compound or entity, an algorithm that transforms input data into useful information, etc..

An invention is covered by a patent only if it used in the way that is described in the claims, or made of at least the composition described in the claims, or made according to the method described in the claims.

Drafting appropriate claims is a skill, better left to patent attorneys.

Seeking and obtaining patent protection can be quite a lengthy and expensive process, depending on the complexity of the technology and its context.

A number of 'routes' can be used to file and obtain patent protection.

At University College Dublin, as in many other academic institutions, because we are involved in risky, early-stage technology development which potentially have large-scale or global reach, we usually use a route that 'buys' us time, while the technology and commercial risks are being addressed by the team involved (i.e. the researchers and commercialisation partners).

Conflict: Patenting versus Publishing

If you publish before filing a patent application, this compromises filing a patent application later.

It is therefore a matter of filing the patent application before publishing the related paper (or other form of disclosure).

Depending on the complexity of the invention, the process of drafting a patent application and filing the application at a patent office can take weeks.

If you would like to discuss this topic further please contact a member of UCD's Technology Transfer team.

Copyright is the legal term which describes the rights given to authors/creators of certain categories of work. Copyright protection extends to the following works:

• Sound recordings, films
• Broadcasts, cable programmes
• The typographical arrangement of published editions
• Computer programmes

The owner of copyright is the author, meaning the person who creates the work. However, as copyright is a form of property, the right may be transferred to someone else, for example, to a publisher. Copyright is a property right and the owner of the work can control the use of the work, subject to certain exceptions. The owner has the exclusive right to prohibit or authorise others to undertake the following:

• Copy the work
• Perform the work
• Make the work available to the public through broadcasting or recordings
• Make an adaptation of the work

Copyright takes effect as soon as the work is put on paper, film, or other fixed medium such as CD-ROM, DVD, Internet, etc. No protection is provided for ideas while the ideas are in a person’s mind; copyright law protects the form of expression of ideas, not the ideas themselves.

A design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colour, shape, texture or materials of the product itself or its ornamentation.

A registered design is a form of 'industrial property', which can be assigned, transferred, licensed or used by the owner.

Design protection is territorial, in effect a design registered in Ireland is only valid in Ireland. Some aspects of the 'design' may also be protected by copyright.

A trade secret is a specific set of information (data, design, process, formula) which is not generally known and by which its owner or licensee can derive economic advantage over its competitors.

It is important to make reasonable efforts to maintain its secrecy, as a trade secret derives most of its value from this.

One can easily see that this can be in conflict with the practice of dissemination via publications and other forms of disclosure of academic institutions.

Yet, while certainly not widespread at University College Dublin, in some cases, depending on the nature of the information, the source of funding of the project, the university-industry collaboration contract that may govern the management of the results, and the commercialisation strategy adopted by the team involved, trade secrets can be a valuable intellectual property protection tool to enable commercial traction.