Intellectual Property Insights

February 06, 2018

Patenting and publishing are are not mutually exclusive – it all comes down to timing.

Loose lips… the danger of disclosing your ideas too early

A common misconception surrounding intellectual property is that obtaining patent protection for an invention involves keeping the invention, or crucial aspects of the invention, secret. Far from it, an inherent part of the patent application process (unless your invention involves national security) is publication of your application, typically 18 months after it was first filed. So patenting and publishing are not mutually exclusive – it all comes down to timing.

A fundamental requirement to obtain a patent is that the invention for which protection is sought should be novel. That is, generally speaking, the invention must not have publically known or used prior to filing the patent application. In many instances, novelty is destroyed by an inventor’s own prior publication. This is often the case in science, where there is typically significant pressure on researchers to publish the results of their research as early as possible for the purposes of obtaining funding and advancing careers. However it is not merely novelty which may be jeopardised by early disclosure. The forward-looking, ‘blue sky’ or speculative statements often found in scientific journal articles (typically in the last paragraph of the discussion!) can be detrimental to the inventiveness (or non-obviousness) of an invention the subject of a later filed patent application, even if the invention itself is not disclosed or anticipated in the article.

There is clearly a tension for many scientists, in particular those reliant on government funding or in the formative stages of their careers, between the need to publish their research and the requirements of novelty and non-obviousness for a patent application. The answer is timing: consider whether research results warrant patent protection, and if so lodge a patent application, before publicly disclosing the work. In this context, public disclosure means any communication that is unfettered by confidentiality, and includes for example a scientific publication in a journal, publication of a conference abstract, publication of a thesis (including appearance of a thesis on the university library shelves), a poster presentation, oral presentation, information uploaded to a website, or showing or demonstrating a prototype device to a third party.

While the initial submission of a manuscript to a journal for review or submission of an abstract for a conference is typically not considered public disclosure (although this is not always the case), best practice is to file a patent application prior to submission. With online advance publication common practice in scientific journals, it can be difficult to control or slow down the publication process once set in train, not to mention that manuscript reviewers are often competitors.

Grant applications submitted the NHMRC and ARC are considered confidential, and hence do not of themselves represent a public disclosure that would jeopardise patent protection. However it should not be assumed that the confidentiality policies are the same for all funding bodies, and if there is any doubt, clarification should be sought and proposals should be marked as confidential.

In the next column we will look at how to disclose research without jeopardising patent protection and what can be done if a problematic disclosure is inadvertently made.

 – Gavin Recchia, PhD, Principal, Davies Collison Cave

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