Don't count your patents before they are hatched

November 14, 1997

CARELESS talk may no longer cost lives, but it can cost patents. Intellectual property is one of the key issues in commercialising research, but to patent an idea, it must not be in the public domain.

That, warned Hugh Thomson, Strathclyde University's research and consultancy services director, not only means not publishing papers or conference abstracts. "Resist the temptation to brag on the Internet. Emails may not be secure. And all sorts of things go wrong over a glass of wine."

But academics must talk to future sponsors and licensees about unprotected intellectual property, and should ask companies to sign confidentiality agreements.

Patent applications should not be driven by prospective plans to publish, Mr Thomson said. "Please don't believe that as soon as you've made a patent application, you can publish without adverse consequences. If you were to publish within 12 months it will destroy the opportunity of aborting a weak application and re-applying with something stronger."

Mr Thomson said there were tensions between the pressures to commercialise research and to publish it. But Bob Smailes, Edinburgh University's research services director, stressed that academics could do both. "You just need a procedure to allow the research to be evaluated and ensure there is enough time for both patenting and publishing."

Both stressed the need for universities to set up well-funded technology transfer units with healthy patent budgets. "The successful protection of intellectual property rights and commercialising research results will enhance your academic career no end, and has the ability to put a sparkle in your pay packet," Mr Thomson said.

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