Publish and Perish
Academic reputations are established through the publication of research results. However, patent applications can be ruined by the premature publication of a new invention.
One of the conditions for obtaining a patent is that the invention is "new". This means to obtain a US patent that the patent application must be filed within the one-year period following the date of any publication, which then establishes the "Bar" date. Note, however, that all foreign patent rights are lost if the publication precedes the patent application, even by a single day. However, after a US patent application has been filed, international agreement creates a one-year period during which time additional foreign patent application may be filed. In most cases it is strongly advised that the patent application be filed prior to any relevant publication to allow an appropriate determination of whether foreign patent rights will be important. If an invention cannot be patented, it is much less likely to be able to be licensed and earn money. World wide patent rights are critically important for some research areas.
What Constitutes Publication
An invention counts as published if it forms "part of the state of the art". In US patent law, as in most other countries of the world, the state of the art is defined as "everything made available to even one member of the public anywhere in the world by means of a written or, visually displayed oral description, by use, or in any other way".
Examples of Publications
Realistically, for any of the above situations to matter, the "other side" usually an infringer seeking to invalidate your patent or a potential licensee trying to avoid royalty payments will have to prove that the thesis was prematurely released, prove when you made your internet posting, prove that your poster display prematurely revealed your invention, prove what you said at the seminar, or whatever undermines your patent. Nevertheless, if serious money is at stake in a patent dispute, the other side will go to great investigative lengths in the hope of discovering some such flaw in your patent prosecution.
The United States is different from nearly all other countries in that the inventor of the invention may file a patent application within a "grace period" of up to one year after publication. Other "grace period" countries are Japan (only six months and then only if the patent office is notified of the publication at the time of the patent filing), and Canada. A grace period merely removes your own publications from the stock of all literature, which comprises the prior art. It gives you no immunity from the effects of other people's publications or patent applications. Note that for all other countries except for the grace period countries of the USA, Japan and Canada, the patent application must precede any publication of the invention if only by a day or the patent may be ruled invalid. However, once a US patent application has been filed and this filing has preceded any publication of the invention, the inventor has an additional one-year period to file any additional foreign patents.
Undergraduate and Graduate Researchers
The importance of keeping innovation and research results confidential may not be obvious to new researchers, who have had limited exposure to the potential value of a patent. It is important that the principle investigator or the senior faculty member take a moment and explain the need for confidentiality to any new researcher, especially if that research may result in valuable intellectual property.
How to Keep Something Confidential
To insure that the patent application rights are maintained, the person with whom you intend to discuss your invention must know in advance that your disclosure is meant to be kept confidential. Although confidentiality can be inferred from the circumstances of the disclosure, it is usually much safer to record your mutual rights and obligations through a Confidential Disclosure Agreement, also known as Confidentiality Agreement or Non-Disclosure Agreement, signed in advance by the person who is to receive the confidential information. It is important to be selective in determining with whom you choose to make your confidential disclosure. Although there are legal provisions for protecting your rights if your invention is disclosed against your will, those provisions carry time limits counting from the wrongful disclosure and are not a complete safeguard once the information becomes generally available. Also, it is strongly advised that you not make any disclosure, including even a confidential disclosure, to a potential customer or licensee for the invention until the patent application is filed. The Office of Research can assist you with the preparation of the appropriate agreements to protect your patent rights.
Before publishing the results of any research, the author needs to ask whether the document or disclosure contains any innovation or discovery that could be patented. As explained in this memo, all foreign patent rights are lost and a one-year time limit is established for any US patent rights upon publication. If there is any question or doubt as to the patentability of a new innovation, the researcher is encouraged to complete an Invention Disclosure form, contact the Office of Research and ask for a member of the Technology Transfer department.
The purpose of this memo is to help you understand how a premature publication can undermine the validity of a patent. This note does not contain definitive legal advice and should not be used as a substitute for the advice of your lawyer or patent attorney. For additional information or for answers to specific questions, please call the Office of Research and ask for a Technical Transfer person.