The academic inventor faces pressure from both sides - should they publish their research to help with academic metrics, or should they keep the research confidential so that a patent application can be filed? However, it is important to understand that research publication and IP protection are not mutually exclusive.
Knowing when to act is critical to a sound IP approach, particularly in an academic setting where publishing research before applying for IP rights is an all-too-common mistake. Before it is too late, ask yourself these questions to help you coordinate your research publication and IP strategies.
1. I HAVE AN IDEA. WHEN IS THE BEST TIME TO FILE A PATENT APPLICATION?
ALWAYS before you publish your research. Once you have published your work, the chances of getting any patent granted can be greatly diminished and, in some cases, virtually zero. Some countries such as the US have a grace period during which any publication by or originating from the inventor(s) would not affect the patentability of your invention. However there is no such grace period in many territories, including Europe and China, which means that publishing your research before filing a patent application would prevent you from securing patent protection in these key territories.
There is often no perfect time to file a patent application. Typically it ends up being a compromise between filing early, before anyone else does, and having the data necessary to support your invention. Your tech transfer office or professional advisor can advise you on the right time to file.
2. I HAVE AN IDEA. AM I ALLOWED TO TELL ANYONE ABOUT IT?
It is possible to talk about your invention with other parties under a non-disclosure agreement (NDA) or other confidentiality agreement. Your tech transfer office should have some template NDAs that you can use. In addition, you should keep track of the information that was shared, with whom, when and in what context.
Although confidentiality agreements restrict the other party from using or distributing any shared confidential information without your permission, it should be borne in mind that they are not necessarily 100% effective in protecting your IP rights. Should the other party breach the agreement by making your idea public, your chances of obtaining patent protection can still be negatively affected. Whilst you would be entitled to sue them for breach of contract, a lawsuit can be costly and time-consuming.
3. I NEED TO PUBLISH A PAPER. WILL THIS AFFECT MY IP RIGHTS?
Yes, if you publish your paper before you file a patent application.
Talk to your tech transfer office as soon as you think that your research could be the subject of a patent application. The sooner they can put things in motion, the sooner you can get a patent application on file. Preparing and filing a patent application is a process that can take a few days to a few weeks, and so it is imperative to plan ahead.
Once the patent application is on file, you can then safely publish your research.
4. MY RESEARCH IS BEING PRESENTED PUBLICLY TOMORROW, AND I JUST REALISED THERE COULD BE SOME VALUABLE IP IN THERE. WHAT CAN WE DO?
First of all, don’t panic! This scenario comes up fairly often and the first step is to contact your tech transfer office and get their advice - they will have experience with this!
The easiest, but possibly the least palatable, option is to simply cancel or delay the presentation. However, presenting your work is a key part of what you do and, in some situations, the presentation cannot be stopped from going ahead.
Another option is to redact key information from the talk. It is often possible to present enough information so as to allow useful discussions to take place, without giving away the key inventive concept and the finer details - an IP attorney can help you determine what information should be redacted.
Finally, it is possible to get a basic patent application on file before you are due to give the presentation. Whilst the short time frame is not optimal, there will be an opportunity to follow up with a more thorough patent application in the coming days, weeks or months.
5. WHEN SHOULD I GET IN TOUCH WITH AN IP ATTORNEY?
Usually your first interaction should be with the tech transfer office who can work with you to determine what you have and if the university can support an IP filing. They may have external IP counsel in place to help you with your filing.
After you leave the university, you will need to learn how to manage and control your IP. A close relationship with your IP attorney will be beneficial in the long run to help your start-up act proactively rather than reactively.
To find out more about how we can help university start-ups develop their own IP blueprint for securing investment, please contact Jason Teng at jason.teng@potterclarkson.com and Sara Holland at sara.holland@potterclarkson.com.
