The purpose of a scholarly article is to disseminate experimental findings and enable other researchers to substantiate those findings. Scholarly articles tend to have a basic structure consisting of sections with familiar titles, for example Abstract, Introduction, Results, Discussion, Methods, References. While the titles and their order may change, one thing cannot change — the article must be sufficiently clear and detailed to allow other researchers to recreate the author's experiments and replicate their results and findings.

A patent application has very similar goals.

(1) It is intended to draw out innovation and make it publicly accessible.

(2) It must also provide sufficient detail regarding the inventor's concept that the public can recreate and use the concept.

It, too, has a familiar structure: Background, Summary, Brief Description of the Drawings, Detailed Description, Examples, Claims, and Abstract.⁴ While the content and purpose of several of these sections overlap with a manuscript's (e.g. Abstract ≈ Abstract; Detailed Description ≈ Discussion; Background ≈ Background/Introduction; and Examples ≈ Results + Methods), the correlation is not exact.

Moreover, the Claims of a patent application have no equivalent in a scholarly article. That said, the overall purpose of the patent application is very similar — to describe the applicant's innovative concept with sufficient clarity and detail that a patent examiner can understand the invention during examination, and the public can recreate and use it.

While the overall purpose may be similar, the differences in the intended audience mean that converting a scholarly article into a patent application is not as straightforward as rearranging the sections, adding some patent claims and filing it as a patent application.

Scholarly articles are intended for other academics with substantial experience and training in the author's technological field — i.e., particle physics papers are mostly read by other particle physicists and physics grad students. In contrast, the initial audience of a patent application is a patent examiner who may not possess an advanced degree or extensive training in the field. That is, a patent examiner with an undergraduate degree in general biology may be reviewing patent applications directed to advanced genetic therapies, and a math major may be reviewing a quantum computing patent application.

This means that many of the terms and concepts presented in a scholarly article must be explained in detail when the article becomes a patent application. More importantly, the academic may even omit or gloss over certain technical aspects that are widely known among their peers but may be completely unknown to others. This is where the Detailed Description is helpful — it often includes an extensive glossary of terms used in the application.

The second major difference between a patent application and a scholarly article is more philosophical. Many academics and laboratories are filled with people who constantly think about, discuss, and possibly even dream about their research — what may seem apparent and logical to them may be quite surprising to the lay person.

Indeed, James Watson and Francis Crick concluded their monumental 1953 paper on the structure of DNA⁵ with the simple statement "It has not escaped our notice that the specific pairing we have postulated immediately suggests a possible copying mechanism for the genetic material."

I cannot be positive, but my guess is that many, if not most, readers missed this allusion to conservative DNA replication. In other words, researcher's modesty may result in downplaying their findings or presenting them as less significant than they actually are. In some cases, academics may think if they discovered something, then anyone could have done the same.

In comparison, the purpose and audience of a patent application requires it to explicitly state its findings, while demonstrating that those findings were not, and could not have been, apparent to others in the field. This is because the law says that patents can only be granted for innovations that are new and NOT obvious. Thus, the patent attorney is required to highlight the applicant's spark of genius while downplaying the work upon which it builds.

Another difference is that patent applications require inventors to explicitly state what they see as their invention. However, when a scholarly article is drafted it is not always clear how or why the disclosed information is inventive.

Moreover, patent law in the U.S. draws a bright line between subject matter that is "appropriate" for a patent application (" processes, machines, manufactures and compositions of matter")⁶ and those that are not ("abstract ideas, laws of nature and natural phenomena… [such as] products of nature"). Indeed, even if the inventive subject matter described in a scholarly article is recognized at drafting, the breadth of that subject matter may not.

The background section of a scholarly article is intended to provide the reader with a brief introduction to the technical field, summarize some prior work in the field, and explain why the present study is important — it should be brief. As The Journal of Biological Chemistry's guide to authors states the Background "is not meant to be an extensive review of the literature," Despite this instruction, it is not unusual to find a background section citing a dozen references or more.

The background section of a patent application is typically even shorter than the same section from a scholarly article. This is out of necessity.

While the MPEP states the Background may include a description of "the state of the prior art … [including] the problems involved in the prior art or other information disclosed which are solved by the applicant's invention" the experienced patent attorney knows that this can be problematic — especially because the term "prior art" is used in patent law to describe the existing body of public knowledge.

Thus, an overly generous description of another laboratory's data or a similarly inartful description of the inventor's own data may be cited by examiners, competitors, and courts to reject an application or invalidate a patent. However, it is not enough to simply move such statements into other parts of the application (such as the detailed description), as an inventor's admissions of prior art may be found throughout the application).

Because inventor statements regarding their own research and statements characterizing other's work can be so problematic, it is essential to scrutinize such statements for their ability to act as an involuntary admission. It is useful to ask the inventor if such sentiments are widely held and/or shared by the field — if not, those characterizations are likely to result from the authors inventive insights. In this case it is safer to remove this reference from the Background, and limit any characterization of its contents.

When disclosing such a reference to the Patent Office, it is best to confine characterization to a direct quote, or, better yet, let the examiner and/or court draw their own conclusion after reviewing its contents. Likewise, ask the author about statements of their own work — are they referring to published results and/or well recognized conclusions? If not, it is best to move those statements into the Examples or other section and make clear that such statements refer to the presently disclosed subject matter.

As described above, scholarly articles are rarely explicit regarding the inventiveness of the disclosed subject matter. This may be due to an author's modesty, because the author sees it as obvious, or because the author misunderstands what can be patentable.

Referring back to the example above of Watson and Crick's article describing the structure of DNA and the nature of semi-conservative replication — the authors may have believed, correctly, that natural phenomena (such as the structure of DNA) is not patentable — but applications based on that natural phenomena are.

For example, that paper could have formed the basis of patent claims directed to methods for replicating DNA in vivo, sequencing nucleic acids, molecules (such as nucleotide analogs) that may be incorporated into the double helix, etc.

It is also important to discuss the scope of the inventor's experiment data. For example, the authors may describe creating or isolating a useful composition having certain characteristics.

Where that characteristic is a specific value, it is important to determine whether that value may fluctuate. If so, it is important that the application describe the specific value, but also a range containing that value. Alternatively, where the characteristic is a species within a larger genus or category it is important to determine whether other species may be substituted.

Because inventors may not fully appreciate the inventiveness of their own research, it is important to ask inventors to describe what useful processes, compounds, or compositions result from their research, and where specific values or characteristics may be broadened or expanded.

While scholarly articles and patent applications have parallel purposes and content, the dramatic differences in target audience require fundamentally different approaches to their drafting.

Brief checklist for converting scholarly article into a patent application:

• Review statements referring to author's own experiments.

•If referring to previously published work, confirm that any characterization of that reference is consistent with express statements in that paper.

•If referring to unpublished work, remove from Background.

• Review statements referencing/citing other's published work.

•If characterization of that reference is drawn from the text, and is widely shared by the field it can remain.

•If characterization of that reference is NOT drawn from the text or is NOT widely shared by the field it should be removed from the Background. Include the reference in an Information Disclosure Statement ("IDS"; all individuals associated with the filing and prosecution of a patent application is required to disclose information, known to that individual, that may be material to patentability),⁷ but limit any discussion of its contents in the application to direct quotes.

• Review with inventor broader implications of the disclosed subject matter — what possible new processes, devices, compositions may result.

• Review alternative ways to accomplish the same goals or achieve the same results.

• Review disclosures of experimental data, characteristics, or values and whether they may implicate additional species, broader ranges, etc.

Recognizing the differences between a scholarly article and a patent application, and understanding the reasons behind those differences may address at least some of hesitation researchers feel in choosing to apply for a patent.

1 See NIH Data Book at https://bit.ly/3rNSyOV, accessed 25 July 2023.

2 https://bit.ly/3Y66nEA, accessed 25 July 2023.

3 35 U.S.C.A. §§ 200 – 212

4 Manual of Patent Examining Procedure, Chapter 600; available at https://bit.ly/3Y8G9RL

5 Watson, J., Crick, F., "Molecular Structure of Nucleic Acids: A Structure for Deoxyribose Nucleic Acid." Nature 171, 737–738; arguably the start the molecular biology revolution and precedent for many of today's genetic therapies.

6 M.P.E.P. Chapter 2100, § 2106

7 M.P.E.P. Chapter 2000 and 37 C.F.R. 1.56.