Protect your patent potential before publishing

October 23, 1998

Researchers in the academic world have a habit that needs to be brought into line with the law - announcing their results before taking steps to protect them with a patent.

To qualify for a patent, an inventor must bring something new to public knowledge at the time of application. If the inventor has already announced the details, the invention is public knowledge and is no longer new.

A proposal to prevent this dispossession is now being debated at European Union level. Although superficially seductive, it conceals a risk of harming researchers and bringing profits to the legal profession instead.

The proposal is for a grace period in which disclosure by an inventor would not work against him or her in a subsequent patent application. It would protect the personal position of the inventor and no one else.

Grace is a regular feature of United States law, but US law is unique in granting a patent to the person who first invents something. Everywhere else, the law protects the person who first files a patent application - a solution chosen for its practicality.

The US solution may look to many to be more equitable, but the appearance is only skin deep. Proving that one was first with the idea can take years and legal bills running into millions. Many scientists in the US want to abandon first-to-invent in favour of the first-to-file.

Law rooted in the era of the nation-state also breaks down when science is international and worldwide publication takes seconds. An invention published in one country might be protected by a grace period; but that might lull scientists into a false sense of security if they do not realise that the local grace period does not work worldwide.

Researchers in the United Kingdom have a practical solution to hand. Patent applications are not hard to make and, since October 1, no fee is payable at the initial stage. The paper already written in preparation for publication is enough to found the application. The Patent Office will be able to record that the application was filed within the normal publication schedule.

If the research proves to be less promising than hoped on peer review, the application can be abandoned. Whether or not grace periods are introduced, the researcher should always take this technical but vital step.

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