Patenting: steps to bring innovation to the clinic

To make innovations in health care quickly accessible for patients, it is vital to assign value and significance to inventions (=valorization). One way to valorize is to protect the novel intellectual property by a patent. The patent underlines the importance of the finding and grants value, which is necessary for clinical development and implementation.

Have an idea or results you think you can valorize? It may be easier than you think. Dr. Oliver Gurney-Champion walks us through his experience of filing a patent application.

Half a year ago, I thought filing a patent would be a tedious and intense process, only relevant to large multinational companies. Since then, however, I have changed my mind. With the help of Wim Meijberg from the Innovation Exchange Amsterdam (IXA), the knowledge exchange office of Amsterdam UMC, I learned the process is easier that one might think. With this article, I hope to convince some of you who are sitting on great ideas to take action to valorize them, either by the patenting process or other routes.

Novel MRI technologies

In my research, I develop and improve (quantitative) MRI techniques that are aimed at personalizing treatment for cancer patients. These imaging techniques allow us to assess important tumor properties such as their perfusion (blood flow) and density, information that can help clinicians determine the best treatment options or assess whether treatments are having an effect.

We realized that modern commercial MRI approaches can introduce a bias in the quantitative parameters and provide the clinician with the wrong information. So, for the past year, PhD candidate Myrte Wennen and I have been working on a correction method to remove this bias from quantitative MRI data (T1-relaxation and dynamic contrast-enhanced imaging). This allows us to assess tumor microstructure more accurately.

Chat with IXA

Although we were working on this approach to improve our own research data, when we came to think about it, this method seemed valorizable; for example, if we needed this bias removed, then others must surely be interested in removing the bias as well. Therefore, in November 2021, we asked IXA how best to valorize our new correction method. This would ensure that vendors, such as Philips, would perform our correction method and ultimately provide clinicians with a more accurate description of the tumor microstructure. After a short discussion, we decided that the method should first be patented before approaching vendors. That is how we got involved in filing a patent with IXA.

Filing the patent: Step one

The first step of filing the patent was to fill out an “invention disclosure form” or IDF. In this form, Myrte and I – the inventors – wrote down what we invented, why it is relevant, what are the advantages over existing inventions, and show some proof-of-principle data. Note that for an invention, the guidelines for proof-of principle-data are far less strict than for scientific publications and typically n=1 is sufficient. With a submitted conference abstract outlining our idea and findings (but still confidential and under review), and with the help of IXA, filling out the form was relatively little work for us and quickly done.

IXA then used the IDF to decide whether they felt the invention was patentable. Although they wanted to patent our invention, our invention was far from easy to explain and understand without a deep understanding of MRI physics. This brought us into a situation in which Myrte and I did not understand patents, while IXA had challenges understanding the details of our work.

MRI lawyers

IXA decided that for this patent we would have to work with an external group of patent lawyers who had in-depth knowledge about MRI. At that point, we provided the patent lawyers with the scientific invention, including what we considered the crucial and new thinking steps. The lawyers subsequently drafted the patent, which consisted of a set of so-called ‘claims’ and background information on the invention. As IXA only files patents they believe are worth valorizing, they paid for the patent filing, including the fees for the expert lawyers.

The list of claims detail very specifically the scope of the invention you want to protect, and the background information is in the form of a short scientific paper to further explain the invention. Our patent draft was sent back and forth several times to ensure the invention was described properly from a methodological point of view, as well as from a patenting point of view. The entire process was very quick and within 4 months from our first chat with IXA, our patent application was filed. At this moment, the patent awaits further evaluation by the examiner at the patent office. This process can take some time – four years on average. I am very curious to see how the patent will make its way through the examination and what happens next. In the meantime, we are preparing a publication on the topic to share our findings with the community.

Get started!

So, if you have an idea or a potential innovation you think could be valorized, don’t wait. Have a chat with the people at IXA or attend one of their workshops. Maybe you have reservations about the idea of commercializing your research, but valorization may be the best (and quickest) way to get your discoveries to the clinic where it can help patients and improve healthcare. Ultimately, IXA’s primary goal is to get the product to the patient.