Have any of you had to fill out a disclosure of invention form? At my institution and I assume, many other institutions, this is a prerequisite to filing a patent. Well, I am currently in the throws of filling out one of these forms and I am here to say that it blows ass.
I was initially very excited about getting a patent on one of the proteins that I engineered. That is, until I started the required paperwork. At first glance the disclosure of invention form seemed easy enough; you just answer the questions.
The questions appear as though they can be answered with a few sentences. No problem. I answer the questions and send it back to my PI for review. What I find out is that the answers I provided, while correct, are not what the lawyers want. What they actually want is a couple of paragraphs of bullshit that contains information that is, at best, tangentially related to the question written on the form.
So for my second attempt at the disclosure form, I elaborated on my answers and then sent the form back to my PI, who then informed me that it was not "sexy" enough.
I really don't think it is possible to sex up a disclosure application, but I give it a shot anyway. Grrrrr.
I just handed in attempt number three and hopefully it's bringing sexy back. Basically, I emphasized how novel my engineered protein was and how it was really awesome at doing what it does and that it is way better than the lame-ass proteins found in nature that function in a similar manner. I felt like I was pimping out my protein when I wrote the third version, so maybe I was on the right track.
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8 comments:
Been there, done that.
WHATEVER you do, do not so much as mention these proteins in a paper, or a poster, or in passing until the patent is filed. While you have a year to file a patent in the US after disclosure, you lose all rights to patent something after disclosure in other parts of the world.
Uh oh. Does disclosure here on the blog count? PULL THE POST!! (j/k)
That's so freaking cool that you're applying for a patent though - congratulations!
TJ - I noticed there were a few questions about whether or not this data had been presented in a public forum. Thankfully, it's only been discussed in group meeting.
How long did this process take you? (Not counting writing the stupid disclosure form.)
AA - LOL! I don't think Magnum, PI would be to pleased if the patent didn't go through because of a blog post. He is all about the patents.
I am pretty excited about the whole thing. If nothing else, it should be interesting the see how the process works.
MXX, the whole patent process (writing up to submission) took us about 10-12 months. Most of that time was spent, no doubt, sitting on the desks of the agency patent folks and their lawyers. We went through several rounds. YMMV, given the workload that the university may have. In addition, where I work, we need to submit our patent proposal to an agency committee which reviews the potential patents to see if they're worth the time to pursue or not. That added an additional amount of time (a couple of months) sitting around waiting for this committee to meet.
Once the patent was FILED, we were able to submit and get our paper published. We still have not heard about the status of the patent ... it's still with the US Patent Office and probably will be for several more months. Overall, it's been about 2 years from when we started.
I haven't had to do anything like this yet, but I think it's coming down the pipeline. I'll try to make it sexy from the beginning!
Good luck with the rest of the process!
If I apply for another patent, I'll try this avenue first. Hmmm. I wonder if a disclosure statement can be too sexy?
Uh-huh girl, good luck with that. been there, done the paper work and finally the company decided they do not want to patent after all (mine was a industry& basic research collaboration). Long story- short, they forbade publishing all throughout my PhD, to reach their decision shortly after I defended my work. What I mean to say is: after all the paper work is done, the lawyers get to play and you'll have to wait for a while before you know what they decided. So if they want "sexy"- make it "sexy"! You can read my take on postdoc life here: http://postdoc-exploring.blogspot.com/
bori - Believe me, I'm doing my best to sex it up. I don't want this to drag on anymore than it has to!
Thanks for the link - can't wait to check it out.
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