Page 43 - Mass General Brigham - Innovators Guide 1.2

43 INNO V AT O RS GUIDE | M ASS GENERAL BRIGH AM

6

6 Patents

Inventions can be protected by a patent if they meet the Patent applications | Provisional
following requirements: and non-provisional

New. The invention must not form part of the state of the art (also known
as prior art) – i.e. all knowledge that has been made publicly available The first patent application filed is often a provisional patent application.
anywhere in the world prior to applying for a patent. This includes printed This application lasts for one year and has a less formal format. It is useful
and online publications, as well as public lectures and exhibitions. As a to quickly establish an initial filing date to protect an invention while still
rule, anything the inventor makes known about the invention is considered providing additional time to conduct research and add supporting data.
prior art – and therefore invention is no longer considered new. Provisional patents are not reviewed by the USPTO and are not made
publicly available.
Inventive. The invention must not be obvious to a person skilled in the
art. In patent law, a “person skilled in the art” is a hypothetical person who Within one year, the provisional patent application must be converted to
knows the prior art in their specialist field. If the inventor describes the a non-provisional patent application. Non-provisional patent applications
purpose of the invention to this person, and she or he readily comes up have a specific structure including a detailed description of the invention
with the same solution, then the solution is probably not inventive. and a set of claims. Each country has its own laws relating to patent
applications, and each requires a separate non-provisional patent
Industrially applicable. The invention must be industrially applicable and application to review for patentability. The Patent Cooperation Treaty (PCT)
practicable, and it must demonstrate that it is implementable and be provides a convenient way to file a single non-provisional application which
possible for others skilled in the art to replicate its implementation. In other will be acceptable for further patentability review by any of the current 153
words, it must be able to be produced and used in the settings for which it countries and regions that have signed the PCT. At the non-provisional
is intended. patent application conversion stage, Innovation typically elects to file a PCT
Non-patentable. Laws of nature, natural phenomena, and abstract ideas non-provisional patent application as it provides better future flexibility.
are not patentable.

While discoveries such as a new genes, biomarkers, molecular targets or
algorithmic formulas are not considered inventions, and therefore are
not patentable, they can lead to patentable inventions and
valuable collaborations.