Edited by Rayla Vilar

How do CSN experiments become patented technology (and potentially products/companies)? In chemistry we often categorize our research as either more fundamental or more applied. Fundamental studies are trying to learn something basic about the way matter works, like why atoms behave a certain way or how light interacts with matter. Applied research is more about how we can use that fundamental understanding to do new things, like make a new battery material or figure out if a certain molecule can be used as a drug. Both types of research are necessary and exciting, and many scientists do both over the course of their careers.

Historically, the US National Science Foundation (NSF) has focused on supporting largely fundamental scientific research. This is extremely important because fundamental understanding often leads to discovery of new scientific principles that nucleate new fields and, eventually, applied scientific solutions to future challenges (that we wouldn’t even recognize during the fundamental research stage). In the last couple of years, the NSF, while continuing to support fundamental research, has added some new programs with a more applied focus. Plus, it has always been considered a positive when NSF-funded fundamental science is recognized as new and important “intellectual property” with the awarding of a patent.

A patent is a legal way to acknowledge that someone specific owns a new idea or technology. Most US research-intensive universities have administrative offices dedicated to helping students, postdocs, and faculty recognize when they may have a patentable discovery. This process can seem mysterious or confusing for those who have never been through it, but I recently went through the experience with a bit of collaborative CSN work and thought it would be interesting to share.

Our journey started when Dr. Jason White’s lab at the Connecticut Agriculture Experiment Station told Joe Buchman, a graduate student in my lab at the time (now Dr. Joe Buchman), that they had some exciting results from studies where they’d applied some of Joe’s carefully designed silica nanoparticles to plants in their greenhouse. Joe’s nanoparticles had an impressive positive impact on how crop plants survived a fungal disease that usually decreases crop yield. Usually, academic chemists race to publish scientific manuscripts with results like this, but it was clear to me that we should consider whether or not this discovery was patentable – after all, there is always a need for new technologies to help farmers grow more crops! The problem is that if you want to file a patent disclosure for a discovery, you have to do that BEFORE you share it publicly in a research article. Otherwise the discovery is out there in the world and anyone can use it! (There are a few famous cases where scientists deliberately released valuable intellectual property to the public, but that’s a topic for a different post…)

So, step 1 was to fill out a relatively brief patent disclosure form for the University of Minnesota Office of Technology Commercialization (OTC). This form asks you to describe the discovery, any related work that has already been published, who was involved in the work, who funded the work, and if there have been any public disclosures. For step 2, university experts in scientific intellectual property reviewed the disclosure, sifted through the scientific literature and other filed patents, and then got back to us to let us know that they thought we had a patentable invention. This was very exciting – it supported my hunch that the CSN-funded work originally focused on controlling how silica nanoparticles transform in water might be valuable for companies to use in agricultural applications.

For step 3, the team shared early drafts of the manuscript we would eventually publish with the OTC team, and patent attorneys hired by the University converted it into a provisional patent application. Legal writing is nothing like the style of this blog or even a formal scientific manuscript – it is not easy to read and it feels very repetitive. A lawyer is involved at this point to carefully consider what “claims” we are making; in other words, what ideas/innovations/inventions are we claiming to be new and non-obvious to justify patenting them.

The lawyer also determines who should be included as an inventor on the patent application. Inventorship is a legal determination for people who contributed conceptually to at least one claim. We have exactly one year from the date that we submit the provisional patent to file a formal full patent application, so this is when the clock starts ticking. Step 4 is to do everything we can in that intervening year to solidly prove the claims we made in the provisional patent or add to them. During that year, we can speak publicly about the invention and publish scientific papers because our claims are already officially within the legal system.

Step 5 is when we meet with the OTC folks to decide if we have a good reason to file the full patent application. I should note that it costs the University money each time the OTC staff or contracted lawyers spend time on our intellectual property. Those costs are relatively inexpensive until the full patent application, so many provisional patents never actually get converted to full patent applications. If the technology commercialization staff or lawyers decide that the claims aren’t strong enough or that they don’t think anyone will ever license (pay to use) the patent, they may decide that it’s not worth proceeding. In that case, one of the inventors could choose to hire an independent lawyer and pay all of the costs to file the patent themselves (though that doesn’t usually happen).

Once the official patent application is filed, it generally takes quite a while (years!) before it works its way through the legal system. Often, during the examination phase (a year or more after filing) an examiner in the patent office will ask for clarifications in order to continue to consider the claims. Sometimes, the examiner rejects some claims (perhaps because they’re too similar to another patent or because they are deemed “obvious” based on other knowledge in the field) and accepts other claims. In the end, if the patent is granted, it is assigned an official patent number. If nobody every uses the patent, the story stops there. However, if a company decides that they want to use the technology, they work out a deal with the patent owners (in this case the University) to pay to license the intellectual property. Essentially, the University “rents” the patents to interested parties but never sells them. In some cases, these are negotiated as exclusive licenses, meaning that only that company can legally use the patented discovery; in other cases, they aren’t exclusive, meaning multiple people could license the patent at the same time.

One factor that ends up being particularly important in either filing or licensing a patent is how easy it would be to detect if someone else were infringing on the patent. By this I mean, is there an obvious way to tell that someone who hasn’t licensed the patent is using the patented technology? For example, does making the nanoparticles in the patented way leave a particular chemical signature that can be detected?  Because even if the idea is unique and valuable, if there’s no way to enforce a license then it might not be valuable to the patenting party.

In a small number of cases, students or faculty actually start a new company based on the patented technology. Of course, starting a successful company generally requires partnerships with people who are experts in business and fundraising.

Only time will tell if a patent will be granted or a company will license the technology for the CSN nanoparticles made by Joe Buchman. If that happens, what started as a fundamental chemistry study could become the basis for a product being used globally to help plants fight disease and increase the overall food supply. While the journey from lab bench to patent is long, the potentially impactful outcomes make it worth the effort.