What is a patent?
A patent is a set of exclusive rights to inventors of a non-obvious solution to a technical problem. Once a patent is granted, the holder has the exclusive rights to the commercial benefits of the invention. For our novel detection method CINDY Seq, we filed a patent application with the Netherlands patent office (Octrooicentrum Nederland, Den Haag). The idea came up in one of our weekly meetings, in which we discussed weekly updates and thought about better ways for a readout of our Cas13a detection assay. Clearly the interdisciplinarity of our team was an asset here. We speculated about the feasibility of using a phase transition as readout, and from that moment on it went pretty quick. We first tested the principle by showing that a non-specific RNase (RNase A) would redissolve RNA/spermine coacervates. This was indeed the case as we describe on the results page, and we speculated that the RNase A could be interchanged by activated Cas13a. Later in the project, we also successfully did this, giving a full proof of principle of CINDY Seq.
When could we file a patent?
Although in principle it is possible to file patent applications for an idea on itself, we were advised by patent attorneys to give a proof of principle before filing. In the following we would like to share some of our experiences how we got to this point. The entire process was accompanied by our supervisor Louis Reese, patent officers from TU Delft, and patent attorneys (from NLO). In the process of filing, there were several important steps that are chronologically described in this section. Once we realized the novelty of combining the physical phenomenon of coacervation with Cas13a, it also appeared that there might be enormous potential for even broader applications. Therefore, it was decided to disclose our idea to the patent office from TU Delft. This amounts to filling in a standardized form in which the inventors are listed and briefly describe their invention. At this stage, the invention is still not to be made public, as this internal disclosure does not provide actual protection on the intellectual property. This meant that it still had to be protected against publication at this stage. As a team we had to decide that we can not communicate the idea to the public unless it has been decided if a patent will be pursued. We soon were invited to meet with Justin Kok, a patent officer from TU Delft, to further discuss the invention and so that he could assess whether it would meet the requirements for a patent application. Upon his approval, the next step could be taken, which was writing the patent.
How was the patent application written?
The writing of the patent application happened in close correspondence with an assigned patent attorney, who was responsible for taking our scientific input and write it in the format of a strong patent application. The legal text of a patent indeed is very different from a scientific text, and quite mind-twisting.
Who owns the patent?
Before the final document is sent it must be clarified who the owners of the patent will be. In our case, the employers of the inventors (TU Delft and NWO) share ownership rights, meaning that the inventors would not have to contribute to the costs of the patent application. As one of the students was also an inventor, things got a little more complicated. When students are involved as inventors in patent applications, they either have to sign to transfer their IP rights to the university, or they should contribute to the costs that come with the filing of our patent. In our case, the student involved chose to sign the transfer of IP rights. This means that the institutions TU Delft and NWO are the owners of the patent once granted, and that the institution will have exclusive rights regarding its licensing and selling. On October 20th, one week before the Judging Form deadline and twelve days from the Wiki-Freeze, the patent application was filed by the attorney and official confirmation of reception was given by the Dutch patent centre. From that moment on we were free to communicate our findings with the public.