Patents: an essential guide for scientists (who know nothing about patents)

A patent is a temporary exclusive right granted by a patent office, such as the Spanish Patent and Trademark Office (OEPM) or the European Patent Office (EPO), in exchange for the disclosure of a new invention that involves an inventive step and has industrial applicability.

You can think of it as a trade-off: you describe how your invention works in the patent specification, define the claims, and receive exclusive exploitation rights in the territories where the patent is granted.

So, what can be patented? Technical inventions with practical applications, such as:

• A new molecule with therapeutic use.
• A diagnostic method.
• A gene-editing tool.
• A new biodegradable material for surgical sutures.

However, ideas, discoveries, theories, or scientific results in the abstract cannot be protected.

Consider this example: discovering a protein that already exists in nature is not patentable because it is a discovery. By contrast, designing a method that uses that protein for diagnosis or creating a new drug based on it may be patentable. The same happens with algorithms: a mathematical algorithm in the abstract is not patentable, but its specific application within a process or device may be.

For an invention to be patentable, it must meet three essential requirements:

• Novelty: it must not have been disclosed publicly before the filing date, whether through papers, preprints, talks, conferences, or any other public channel.
• Inventive step: it must not be an obvious solution for a person skilled in the art and must represent a genuine technical advance.
• Industrial applicability: the invention must be capable of being manufactured or used in industry or clinical practice.

The central dilemma is whether to disclose in order to protect (a patent) or conceal in order to protect (a trade secret).

On the one hand, a patent provides strong and enforceable exclusivity. In exchange, your invention becomes public, protection is time-limited, and there are costs associated with filing, maintenance fees, and patent attorney services.

A trade secret, on the other hand, does not require registration or annual fees and can last indefinitely. However, it loses its value if the information is independently developed or reverse-engineered. So how do you choose? A simple rule is:

• Patent anything that can be easily reproduced once it reaches the market, such as a pharmaceutical product, reagent, or hardware component.
• Keep secret anything that is difficult to decipher from the outside, such as process know-how or internal software algorithms.

Choosing the European patent route can be advantageous for three key reasons.

• Quality and investment signal: The EPO examination process is among the most demanding in the world regarding novelty and inventive step. A patent that passes this examination reaches the market with greater credibility and serves as a quality signal for investors.
• Cost efficiency: A single process can provide protection across nearly 40 countries at a cost similar to filing a small number of separate national patents.
• International confidence: Many national patent offices rely on EPO examination results, making international extensions simpler and more efficient.

There is also the Unitary Patent, which allows protection across participating EU countries with a single title and a single renewal fee. Although Spain is not part of the Unified Patent Court (UPC) Agreement, the Unitary Patent still has effect in Spain. Nevertheless, many Spanish patent holders continue to prefer the traditional validation route, particularly when they want to preserve the option of litigating before national courts.

A patent is first and foremost a barrier to entry, although not an impenetrable wall. Competitors will evaluate whether it is more profitable to infringe, challenge, or work around that barrier. That is precisely where its power lies: a strong patent forces large players to the negotiating table

The well-known Fractus case, a spin-off from the Polytechnic University of Catalonia, illustrates this perfectly.

Thanks to its patents covering fractal antennas, the company secured a $41 million settlement from one of the world's largest smartphone manufacturers. Its licensing model has generated more than $250 million in royalties. This demonstrates that a well-constructed patent can become the asset that protects and grows a small company.

Ultimately, a patent is your primary negotiating asset:

• You can monetize it directly  through licensing agreements and royalties, sell it outright, or contribute it as a non-cash asset to your startup's capitalization table. tabla de capitalización de tu startup.
• It is a clear sign of maturity. Deep tech investors evaluate technological portfolios when valuing companies, and in sectors such as biotech, medtech, and cleantech, patents often represent the defensive moat that investors scrutinize during technical due diligence.

An state of the art includes everything publicly available before your filing date: papers, conference presentations, deposited theses, and previously published patents. Any of these disclosures can destroy novelty, even if they come from your own research team.

In Spain, Article 21 of Patent Law 24/2015 regulates inventions created by researchers at public universities and research institutions. Researchers must disclose inventions to their institution within three months and may not publish patentable results before filing or before the applicable deadlines have been met.

The optimal filing point is usually around TRL 3-4, when a solid proof of concept already exists.

Patenting too early means incurring costs before a viable business case has emerged. Patenting too late may result in losing novelty altogether.

It is also important not to rely on the 12-month grace period available in countries such as the United States. Across Europe and most of the world, such protection does not exist.

Our recommendation  is straightforward: before submitting a paper for peer review, consult a patent attorney or your institution's Knowledge Transfer Office (OTRI/OTC).

The patent application process can be summarized in four major stages:

1. Prior-art search: Review databases such as Patentscope and Espacenet to obtain a comprehensive view of the existing technological landscape.
2. Drafting: Prepare the patent specification, including drawings, abstract, and claims. This is usually done with the support of a Knowledge Transfer Office or specialized patent attorney.
3. Filing and priority: The priority date determines the point from which novelty is assessed. Once the application has been filed and priority established, you can publicly disclose your technology because your application takes precedence over later publications. The priority date also grants 12 months to decide where to extend protection internationally.
4. Publication and examination: The application becomes public after 18 months. Once it passes examination, the patent is granted.

There are three ways &nbspto apply for a patent: a national application with the OEPM, a European patent application with the EPO, and an international PCT application (WIPO).  

The latter does not grant a patent, but it gives you about 30 months from the priority date to choose which countries to seek protection in—a crucial period while you close your seed round or validate your product.

Let’s look at when each route is best suited using the following table:

The PCT route does not grant a patent by itself but provides approximately 30 months from the priority date to decide in which countries protection should ultimately be pursued. This is not simply a legal decision; it is a business decision. Your commercialization strategy—whether licensing, selling, or exploiting the technology exclusively—determines which route is most appropriate, which countries need protection, and what costs are justified.

The costs and timelines associated with patent protection depend on the profile of the owner and the chosen geographical strategy.

The costs may be borne by:

• Independent inventors or startups: They pay drafting, prosecution, filing fees, and renewals in exchange for retaining full ownership. During Seed-stage phases, these costs are often financed through venture debt rather than equity financing, helping founders preserve control.
• Institutional researchers (universities or CSIC)The institution generally owns the patent and covers the associated costs through its Knowledge Transfer Office, while sharing future royalties with the inventor. Spanish public universities benefit from a 50% discount on OEPM fees (or 100% when commercial exploitation can be demonstrated), while CSIC has its own rules and exceptions.

The following table provides approximate figures for the costs of registering a patent depending on the route you choose, although you should keep in mind that these costs tend to be higher due to drafting fees and intellectual property agent fees:

In addition to these costs, patents require annual renewal fees to maintain exclusivity rights. These fees increase over time, from a few dozen euros in the early years to several hundred euros later in the patent's lifespan, which can extend up to 20 years.

At this point, one important distinction should be clarified: owning a patent does not automatically grant you freedom to commercialize an inventionYour product may be protected by your patents while still infringing third-party patents that remain active in your target markets.

An Freedom to Operate (FTO) analysis is designed to:

• Verify active third-party patents in the relevant markets.
• Assess infringement risks and identify required licenses.
• Determine whether your technology can be redesigned to avoid competitors' rights.

This additional layer of analysis is highly valued by investors because it reduces uncertainty and demonstrates that your competitive advantage can actually be commercialized. In regulated sectors such as biotech and medtech, it is considered a standard element of technical due diligence.

Now that you understand how patents work, it is equally important to recognize the mistakes that scientific founders routinely make. The most common include:

• Publishing too early. Patent filing should be aligned with a business plan capable of supporting the associated costs.
• Confusing authorship, inventorship, and ownership. The author signs the publication, the inventor contributes the claimed technical solution, and the owner holds the legal rights. These roles are not necessarily held by the same person.
• Failing to review ownership rights with your university. If institutional resources have been used, ownership may belong to the institution. While it may cover costs and legal protection, you may only receive a percentage of the resulting benefits, making negotiation essential.
• Missing the international priority deadline. Remember that you have only 12 months from the first filing to expand protection internationally.
• Neglecting technology surveillance. Monitor competitors and review patents in your field using tools such as Espacenet, Patentscope, and Google Patents.
• Failing to budget for annual renewal fees or conduct an FTO analysis before scaling.

Above all, remember this: a patent protects a strategy, not a scientific paper. Within the investment ecosystem, the quality and scope of the claims matter more than the scientific narrative itself.

The breadth and strength of your protection determine the value of your technology. That is why a well-designed patent improves negotiation outcomes, licensing opportunities, and fundraising potential.

As discussed throughout this guide, technology transfer is the essential bridge between scientific discovery and commercial success. It transforms laboratory knowledge into a viable and scalable business.

Translating your R&D results into a competitive commercial advantage requires specialist expertise. At Bolboreta Investiga, we help you decide what to protect, when to protect it, and how to transform patents into valuable assets that support growth, licensing opportunities, and investment readiness while building a capitalization structure that remains attractive to venture capital investors.

Does your research have industrial potential and are you wondering whether it is patentable? At Bolboreta Investiga, we help you evaluate your technology, design an intellectual property strategy, and prepare your patent portfolio to attract investment. Contact our experts.