Academic researchers and scientists often face a challenging dilemma when deciding whether to patent their findings or publish them in scientific journals. For them, the journey from idea to recognition regularly involves a pivotal decision: Should I publish my research findings in a scientific journal or file a patent application to protect my invention? This dilemma is rooted in the interplay between patenting and publishing, two distinct avenues for sharing intellectual property (IP) and advancing knowledge. Both publishing and patenting have significant advantages, but they come with very different implications for IP, academic reputation, and commercial opportunities. And, while both contribute to broader scientific and technological progress, they come with unique legal, commercial, and academic considerations. Understanding the balance between these options is crucial for researchers and scientists as inventors looking to protect and share their innovative ideas effectively to help them make informed decisions that align with their goals.
The Global Landscape of Patent Systems
One of the first hurdles in this decision-making process is understanding the patent system, which is not uniform across the world. Patents, though globally recognized, are governed by country-specific laws. While there is no single or universal patent system, significant strides have been made over the past few decades to standardize and synchronize laws, and harmonization efforts have been sought to streamline patent application processes in many jurisdictions. Despite these efforts, there are still differences in patent requirements and processes between countries. But at the heart of most patent laws, systems, and practices are three fundamental criteria that determine the patentability of an invention: novelty, inventiveness or inventive step (or non-obviousness), and industrial applicability. These criteria guide patent examiners in evaluating applications and ensuring that only true innovations are granted exclusive rights and these are briefly discussed below and more elaborately in other blog posts on this site.
Novelty – the importance of first disclosure:The first and perhaps most critical criterion for an invention to be considered patentable is novelty, or, in other words, the invention must be new. For an invention to be considered novel, it must not have been publicly disclosed in any form before the filing of a patent application, and this can be more complicated than it sounds. Public disclosure takes many forms and it is not limited to formal publications in scientific journals but extends to any kind of public access, such as conference presentations, posters, blogs, or even social media posts and videos, as well as any form of public use prior to the filing of the patent application. Anything made public before filing can potentially destroy the novelty of the invention and render it ineligible for a patent.
Researchers need to be especially cautious about verbal disclosures, where even a casual statement at a conference or an online seminar or even among colleagues without any sort of protection such as confidentiality agreement, etc., could be seen as prior art that undermines the novelty of a patent application. With modern tools like machine translation, patent examiners can easily access publications in foreign languages, making it crucial for researchers to be aware of global disclosure practices.
Importantly, even after a patent has been granted, the risk does not end. If a competitor or other entity later uncovers an earlier disclosure of the same invention, they can challenge the patent’s validity. Such challenges, while costly and time-consuming, are not impossible, and the internet has ensured that even long-forgotten publications can resurface as prior art.
Inventiveness or inventive step – the non-obvious requirement: The second key criterion is inventiveness, which is also known as non-obviousness. To be patented, an invention must not be an obvious modification or combination of existing knowledge or a non-obvious improvement over existing knowledge or know-how. This means that it must represent more than a trivial or incremental change, which is a common misconception among those seeking patents for slight innovations. This criterion ensures that patents are granted for truly innovative ideas rather than trivial modifications.
Patent examiners typically judge inventiveness by considering what a “person skilled in the art” would have thought and by asking whether such a person would find the invention surprising or inventive. This means that if the invention would surprise an expert, who has been determined to be a “person skilled in the art” in the field, demonstrating a significant inventive step, it is likely to meet the inventiveness requirement. Interestingly, even low-tech inventions can be patented if they fulfill the necessary inventive threshold, showing that patent systems recognize a wide spectrum of innovation.
Industrial applicability: ensuring technological relevance: The third criterion is industrial applicability, which ensures that patents are granted only for inventions that have practical use or are capable of being used in some form in a specific industry or sector. This criterion excludes inventions like new theories, natural phenomena, purely theoretical discoveries, or abstract ideas, which are typically protected through other forms of intellectual property rights like copyrights.
In the context of software patents, it is important to note that while software itself is not patentable, software that results in a “technical effect” or is “embedded” in hardware might qualify for patent protection in certain jurisdictions, such as the European Union. Additionally, understanding these three criteria is essential, as failing to meet one of them could result in a patent being denied or invalidated at a later stage.
The Timing of Patents and Publications
One of the central challenges many researchers face is understanding the delicate timing of patent applications and publication submissions. The crux of the dilemma comes when researchers consider publishing their work before filing for patent protection. If a researcher decides to publish their findings first, they risk losing the novelty of their invention. While publishing a research paper or presenting at a conference can be a valuable way to share findings with the academic community, it can also jeopardize a researcher’s ability to obtain a patent. Once an invention is publicly disclosed, whether through an academic paper, conference presentation, or even an online blog, patent applications filed after that date may be rejected due to a lack of novelty. Most patent offices worldwide consider any public disclosure prior to filing as prior art. This means that once an invention is published or presented to the public, it is no longer considered novel, and a patent application could be rejected based on this prior art. The United States gives inventors a twelve-month grace period allowing an inventor to file a patent application within twelve months of the inventor’s own disclosure. However, not all countries have a disclosure grace period. This is why many researchers are caught in a dilemma: Should they publish early to gain academic recognition, or should they wait to secure a patent, risking the delay of their publication?
Publishing after filing a patent application does not usually cause issues, as long as the invention is kept confidential until the patent application is filed. Researchers can even refer to their pending patent in academic papers, as long as the patent is filed first. Filing a patent application (even a provisional one) can be done before any public disclosure. In fact, patent applications are not published until 18 months after submission, giving the applicant a window of time to publicly disclose the work (such as through academic publishing) without compromising the patentability of their invention.
In contrast, when choosing the opposite direction of publishing before filing a patent application, some countries, like the United States, offer a grace period for inventors who disclose their work publicly within 12 months before filing for a patent. During this period, the publication or presentation will not automatically invalidate a patent application. Still, this exception is not universally available, and relying on a grace period can be risky, as it introduces a narrow window of opportunity and adds uncertainty. However, publishing an article before filing a patent in many countries, including most of Europe, means that the invention is no longer eligible for patent protection, as it would have lost its novelty. Researchers in these jurisdictions must be particularly cautious about what they disclose and when. In any case, once an idea is published, the clock starts ticking for the novelty requirement, and most jurisdictions require patent applications to be filed within a very limited timeframe to preserve the right to seek a patent.
The Role of Patent Applications in Academic Publishing
Despite the abovementioned challenges, patenting and publishing are not mutually exclusive, and patent applications can coexist with academic papers, provided the timing is managed carefully. Once a patent application is filed, it remains confidential for up to 18 months before it is published. This provides an opportunity for researchers to file their patents first and then submit their findings to academic journals afterward. By doing so, they can both protect their inventions and contribute to the scientific community.
Moreover, patent applications can be cited in academic publications, which may lend additional weight and credibility to the research. However, publishing before filing for a patent is risky. If the invention is disclosed publicly before a patent application is filed, researchers risk losing their ability to protect their work legally.
Ownership and Legal Considerations
One of the key differences between patents and publications is the matter of ownership. While academic publications are usually copyrighted by the authors; patents assign ownership of the invention to an entity that files the application applying for a patent, and they may not be the inventors themselves. Since in academic publishing, authors typically retain copyright over their work, it gives them control over how their research and invention are distributed and shared. However, when it comes to patents, ownership is more complex, and as aforementioned, the inventors of a patent might not be the ones who ultimately own the rights to it.
In many cases, especially in academic and corporate research environments, the institution or employer rather than the individual inventor owns the patent rights. This is often determined by the terms of the researcher’s employment contract, which may include clauses stipulating that any inventions created during the course of employment belong to the employer. Therefore, while researchers as inventors are recognized in patent applications, the rights to commercialize the invention may lie with the institution or a business entity that owns the patent rather than the researcher. Patents are owned by legal entities like universities, research organizations, or companies, which then license or enforce those rights. This distinction is critical, especially for those hoping to commercialize their inventions. The rights conferred by a patent enable the owner to control who can manufacture, sell, or use the patented invention.
This distinction also extends to the role of patent attorneys. While inventors may describe the invention to a patent attorney, it is the attorney’s job to draft the patent application in the legal language given the techno-legal nature of the claims and specifications for the patent applications along with the submission of many legal forms that need to be legally valid and as per regulations and practices of each of the chosen patent offices and jurisdiction laws. In contrast, in academic publishing, authors usually have a more direct role and control over what they write in the research paper themselves, although they may collaborate with other researchers or institutions.
Strategic Considerations: Patents and Commercialization
One of the major advantages of patents lies in their potential for commercialization. A patented invention offers exclusive rights, allowing the inventor or patent holder to license the invention to other entities, thus generating revenue. In contrast, publishing an invention in a journal or conference paper does not provide any direct control over the invention’s use by others.
Some researchers choose to file patents with the hope of licensing the technology to companies or even selling the patent outright. This can be a lucrative venture, particularly if the invention has commercial potential. Some startups rely on patents as key assets, helping to attract investors and secure funding.
In contrast, patent litigation can be costly and time-consuming, especially for smaller firms or individual inventors. Patents require significant investment in terms of filing fees, attorney costs, and maintenance fees to keep them active. However, when managed effectively, patents can protect an innovation, enable revenue generation, and establish market dominance.
Balancing Patents and Publications
To navigate the patenting vs. publishing dilemma, researchers need to consider their goals and the potential commercial value of their work. If the invention has strong commercial potential, securing a patent can provide a clear path to monetization, whether through licensing deals, partnerships, or start-ups. On the other hand, if the research is primarily intended for academic advancement and sharing knowledge, publishing may be the better option. In either case, there are strategies to protect intellectual property while advancing academic careers.
Non-disclosure agreements (NDAs): To safeguard their inventions while deciding whether to patent or publish, researchers often rely on NDAs. An NDA is a legal contract designed to prevent others from disclosing or using proprietary information. Before disclosing an invention to potential collaborators, investors, or partners, researchers can have them sign an NDA to maintain confidentiality. This can safeguard the novelty of the invention and ensure they do not accidentally lose patent rights due to premature disclosure while allowing for discussions or collaborations to move forward.
Provisional patent applications: For researchers and scientists still unsure about filing a full patent application, a provisional patent can serve as a preliminary step. A provisional patent application provides a low-cost, flexible way to establish a priority date for an invention, where it establishes a filing date and secures a ‘priority’ status for the invention, allowing researchers a year to assess its commercial potential, refine the invention, or secure funding. Researchers can file a provisional application and then disclose their work publicly, with the assurance that their invention is still protected. A full patent application can be filed within 12 months, providing time to assess the viability of the patent. Thus, during these 12 months, they can disclose the invention publicly within reasonable limits without jeopardizing the patentability of the invention.
Conclusion
The decision to patent or publish is not one to be taken lightly, as both options offer distinct advantages and challenges. Researchers must weigh the potential for commercialization and legal protections offered by patents against academic recognition, knowledge sharing, and the long-term implications of academic publications for their academic career and commercial rewards. Both options have their place in the academic and industrial landscape, and researchers need to be aware of the implications of their choices.
While patenting and publishing can often coexist, careful planning is essential to ensure that the novelty and potential of an invention are not compromised. Ultimately, understanding the legal intricacies of intellectual property, the rules of disclosure, and the commercial value of an invention will help guide researchers toward the best path for their work.
Thus, to navigate this complex terrain, researchers should carefully consider the timing of their disclosures, explore the possibility of provisional patents, and consult legal professionals or technology transfer offices at their institutions for guidance on patent laws and intellectual property strategy. The ultimate goal should take into account the advancement of scientific knowledge while protecting and potentially commercializing innovations that can make a real-world impact.
