Securing intellectual property rights at the university begins with submitting the Innovation Form [https://ctt.gumed.edu.pl/zgloszenie-innowacji/]. In that way the inventor informs their employer – the Medical University of Gdańsk (GUMed) – that the results of their research may have implementation potential.
From the moment the form is submitted, the inventor(s) begin working with a patent attorney to prepare a patent application that will enable the protection of intellectual property through the exclusive right to commercialize the invention by the applicant(s). At this stage, all attention is focused on describing the invention as accurately and precisely as possible, so that the patent office examiner will issue a positive decision regarding the intellectual property rights to the proposed solution. While performing these tasks, we often do not yet think about the subsequent stages of the process, such as what happens after a positive decision is issued and what the associated costs will be.
If the patent is granted by the Polish Patent Office (UPRP), the costs involved are relatively manageable. However, when a positive decision comes from the European Patent Office (EPO), the financial burden may be significantly higher. Obtaining a European patent is a major achievement, as it provides exclusive rights in up to 39 countries. At that point, a decision must be made regarding in which countries the patent will be validated (i.e., maintained in force), and accordingly, what the annual maintenance costs will be.
For this reason, early contact with potential buyers or licensees who may be interested in the technology is very important from the perspective of the Technology Transfer Office. In the innovation disclosure form, we ask inventors to indicate potential buyers, allowing us to verify market interest shortly after the patent application is filed. Technologies developed at the university are usually at an early stage of market readiness, and typically more time is needed for testing, as well as additional funding for further research – whether at the prototype level or in preclinical (e.g., animal) studies.
In recent years, we have observed an increasingly efficient and faster review process by patent offices. While this provides faster certainty regarding exclusive rights, it also means that relatively high maintenance costs can arise sooner. Patent fees in European countries are paid annually. These costs usually include not only the official patent office fee but also the cost of hiring a national patent attorney who can handle the payment on behalf of the patent holder.
Therefore, it is worth considering these future steps already at the patent application preparation stage: in which countries protection will be sought if the patent is granted, where potential manufacturers or licensees are located, which markets the solution is intended for, and – most importantly – what the ongoing maintenance costs of the patent will be. It is also crucial to search for an investor or licensee who is not only interested in implementing the technology but also willing to take on the financial obligations related to patent protection.