Presented by the New England Medical Innovation Center & Advance-CTR

Congratulations! You are ready to dip your toes into the commercial waters and begin the process of transforming your technology into a product or business. Not so fast. Before you do anything, there are 3 crucial things you need to know about intellectual property and talking about your idea in public realms. Take note: These tips can mean the difference between whether your innovation sinks or swims.  

1. When to File a Provisional Patent Application

ASAP! We live in a “first to file” country, which means that even if you have meticulous notes and data showing you may have been the first person to conceive of your idea, you will only receive senior patent rights if you file before anyone else does. Filing a provisional patent application is the first step you take to protect your idea and can cost just a few hundred dollars. The provisional patent application will protect you for up to one year, which gives you the benefit of having “patent pending” on your idea and the ability to share your idea with others. Plus, it is easy to file additional provisional patent applications if you need more time to work on your idea.

2. Sharing Your Idea

Be very careful about sharing your idea with others until you have some level of protection in place. You can consider your research team a safe zone; however, you risk having your idea exploited by talking about it at lectures, conferences, in SBIR applications, hackathons, and other public events. It is always best to err on the side of caution and file before making any public disclosure to preserve all patent rights. Any public disclosure you make before filing can create large hurdles for you in defending your idea.

3. Who Owns Your Idea

The answer to who owns your idea will vary depending on your institution. We recommend you review your employee contract and discuss the technology transfer protocol with your institution — remember: Each organization is different. When filing a patent application, there are significant differences between who the inventor(s) are, who the applicant(s) are, and who the assignee/owner is. You may have several inventors, but the owner is the person or entity to whom rights to the patent application or patent have been assigned.

We hope that these tips are helpful as you begin the path to commercialization. Please note that these tips are for general information only and are not intended to constitute legal advice. You should contact your attorney to obtain legal advice with respect to any particular legal matter.

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