How apply for a patent?

At what stage of work did you think of the patent?

Both me and the head of my division felt that our idea had patent potential when we already submitted our application to the BIOTECHMED-1 competition. Indeed, we wrote in the application that if the proposed hypothesis proved to be right, the results obtained would serve as the basis for a patent application and the preparation of a publication.

As we are talking about the process of applying for a patent now, apparently the hypothesis did work. What did it assume?

We assumed that the modification of alendronate-containing hydroxyapatite nanoparticles with lecithin increases the in vitro cellular uptake of such nanoparticles. The project aimed to create hydroxyapatite nanoparticles, a material resembling a component of human bone that would contain alendronate, which is an active substance used as a drug against osteoporosis. As a pure substance administered in tablets, it has an extremely low bioavailability of around one per cent. Bioavailability refers to the same dose given intravenously. This means that if we administered the entire oral dose into the bloodstream at once, it would reach one hundred per cent. Unfortunately, only one per cent of such a dose is absorbed from the digestive system, and this is an extremely poor result. We came up with the idea that we would encapsulate the alendronate with a nanoparticle and then encapsulate the nanoparticle in an enteral capsule to transport it safely to the intestine, where it would be absorbed. Similar solutions already exist, but using our experience from other projects, we decided to modify the nanoparticle with lecithin, a phospholipid that is found in the cells of our body. This solution will allow us to increase the assimilation of the nanoparticle with the drug.

You did the research and confirmed the hypothesis. So, the next thing you did was to contact the WUT Intellectual Property Protection Department, which is part of the WUT Innovations Centre.

This was not my first patent application. I wrote the first one over ten years ago, so I knew where to look for the right application forms. It was easier for me. I could get down to filling them in straightaway and later, with the documents already completed and signed, contact the Department (editor’s comment: at that time, it was a different unit, which was transformed into the WUT Innovations Centre). I would like to stress that I am incredibly grateful to Joanna Latosza, who was my doctoral student at the time. She collected all the signatures and supported the team in filling in the formal aspects while I, as the head of the project, was doing my internship abroad.

How does the Department support researchers when it comes to patent protection?

The WUT Intellectual Property Protection Department (DOWI PW) goes through the provided documents and indicates areas requiring supplementation. The staff also checks whether the technology has commercialisation potential, whether it is already worth patenting at this stage, or whether something more should still be done to extend the research. It is worth mentioning that DOWI PW helps with the documents in formal matters, such as splitting the contribution percentages between the creators, agreements concerning students, and declarations, but not in terms of content, as that’s patent attorneys’ job done later. The completed package of documents is sent by DOWI PW to the office of patent attorneys with which the Warsaw University of Technology cooperates.

Is this the end of the role of the researcher?

Not really. The people in charge of this application, working at the law firm, contact the creators and ask them to supplement the information. You must describe exactly what the solution is, what the existing state of the art is, what is in the literature, preferably patent literature, but there may also be scientific literature, similar to this solution, what is possibly completely different, in what way our solution is better than those described in the literature. You also need to give examples of how you came up with the invention. And then there is the most crucial element - the claims. This area requires the most work so that you can protect specific features and important aspects of your technology.

How long does it all take?

DOWI PW performs its activities within a few days. The law firm contacts us very quickly. After that, it is up to us how quickly we send the requested information. It is also important what changes are to be made. We had to change the drawings because ours were in colour and we needed black and white for the application, among other things. In addition, we extended the application to include another experiment. When everything is done, the application is sent to the Patent Office of the Republic of Poland. Our technology has also been filed for international protection and we are now selecting the countries where we want to reserve the solution. We have 12 months from the time the Patent Office of the Republic of Poland assigns an application number to the invention to file an international application.

What is currently happening to this application?

At the moment, our application at the Patent Office is awaiting review. It has been published on the Office's website, which has 18 months from the notification to do so. The Office may address some questions to the creators. After examination, the patent is granted or not.

How long does it take to obtain protection?

That depends. For example, my first application in 2013 resulted in a patent being granted in 2017. Sometimes it takes less time, sometimes more. But the technology is protected from the moment the documents I accepted are sent by the patent attorneys' office to the Patent Office of the Republic of Poland and I receive an official certificate of receipt, which includes information on assigning an application number to a given invention.

Does patenting interfere with scientific publications?

No, not at all. The only thing to remember is that we can't publish or present anything until an application number is assigned. Once we receive the relevant number, our technology is secured, and we can send the prepared publication to the journal the very next day.