In the world of academia researchers live by the mantra of \u201cpublish or perish\u201d.\u00a0 Publications are a means by which to gain recognition, tenure, grants and even better job offers.\u00a0 But, they are also certain to become the kiss of death for patent eligibility of the invention.<\/p>\n
There are five things every researcher needs to know and understand with regards to patents.<\/p>\n
5.\u00a0 Many institutions of higher education have some sort of intellectual property policy.\u00a0 As part of the policy, most researchers will have to assign to the university all rights to the invention.\u00a0 In return, the university will typically share with the researcher a percentage of the profits generated from the commercialization of the invention.\u00a0 When there are multiple inventors, the inventors will have to determine how they will divide among themselves the revenues received from the university \u2018s commercialization practice.<\/p>\n
4.\u00a0 Not every research participant, author or co-author listed in a published article is an inventor for patent purposes.\u00a0 Under patent law, inventors are those individuals who\u00a0contributed knowledge<\/em> to the invention.\u00a0 Those who participated as assistants or mentors may have contributed in some manner or assisted in the reduction to practice of the invention, but if they did not\u00a0contribute knowledge<\/em> they need not be considered as inventors.<\/p>\n 3.\u00a0 Before publishing an article or presenting at a convention your latest findings, it is a good idea to talk with your institution\u2019s technology transfer or intellectual property office.\u00a0 This way, you will avoid inadvertently publicly disclosing your invention\u2026which could impede your university from getting a patent for the invention.\u00a0 If the clock is ticking against you because you\u2019ve already submitted an article for publication or have printed out posters for the convention, discuss with your\u00a0 technology transfer or intellectual property office options for filing a provisional patent application.\u00a0 This a great mechanism for preserving your rights over an invention while the final non-provisional application is filed.<\/p>\n 2.\u00a0 Provisional patent applications can be used as a mechanism through which to reserve your rights over the invention while research is still ongoing or while you investigate further areas of development of your invention.\u00a0 At the end of day, provisional patent applications must be converted into non-provisional applications.\u00a0 If the conversion process does not take place within the 12 month period allotted by the United States Patent and Trademark Office, then the application will be lost, along with the preservation of the rights over the invention.<\/p>\n 1.\u00a0 Any public disclosure of your invention will effectively become prior art, and it can and will be used against you by an examining officer.\u00a0 This includes published articles, presentations and posters, among others.\u00a0 In essence, a public disclosure is any disclosure made about the invention which would allow a subject matter expert to reproduce or replicate it.\u00a0 In the United States, an inventor is granted a 12 month grace period from the date of the public disclosure to file a patent application.\u00a0 In the European Community and other jurisdictions, grace periods are non existent.\u00a0 In those countries, any and all public disclosures will thwart any hopes for a patent.<\/p>\n At the end of the day, before you publish talk to an expert and discuss all of your options.\u00a0 If you don\u2019t, you just might regret it.<\/p>\n Author:\u00a0 Patricia Ram\u00edrez Gelp\u00ed, J.D., LL.M.<\/p>\n