The push towards research commercialisation is bringing academia and industry closer than ever. It’s an exciting time to work in the tech sector, with more researchers bringing their ideas out of the lab and into the community. Whether you’re founding your own spinout or licensing your research to large corporations, patent protection is an important part of this process.
As former researchers, we know that there are a lot of myths and misunderstandings about what you can publish and when you can publish it if you want to secure a patent. These misunderstandings can result in research not being published, disclosures preventing you from getting a patent, or both. This article will help you to avoid some of these pitfalls.
Self-disclosure
Academia encourages sharing your discoveries far and wide as soon as you’ve made them, from presentations at conferences and journal articles to social media. While this is great for fostering a collaborative culture, it can cause problems for getting patent protection.
A patent must be novel and inventive over the prior art. This means that it must be new, and it can’t be an obvious modification of something that has already been shared publicly. Prior art includes any material made public prior to the filing date of your patent, including things you’ve published yourself. It doesn’t need to be in a formal publication, even a conversation with one member of the public can be enough to destroy novelty.
If you share your work, even through social media posts, lectures, or conversations at a conference, this disclosure could be considered novelty destroying. Offering to sell a product based on your invention is another form of self-disclosure that can destroy novelty. You also want to avoid publishing anything that may make your invention obvious. The place where this happens most often is in the ‘future work’ section of journal articles, where it’s common to discuss hypotheses or research plans.
Non-disclosure agreements
If you plan to talk to collaborators or investors before you’re ready to file a patent, avoid disclosing any information that would be novelty destroying, and arrange for those involved to sign a non-disclosure agreement (NDA), first. This will allow you to share without losing the right to patent your invention. Some Universities and research institutes have organisation wide NDAs for both internal and external collaboration, so talk to your organisation or tech transfer office and see what’s already in place. Alternatively, we can help you with a standard NDA.
Grace periods
If you have accidentally disclosed something that you want to patent, all hope is not lost! While this does cause difficulties, many countries still allow you to get patent protection so long as you file your application shortly after making the disclosure. The time after disclosing your invention where you can still get patent protection is called a grace period.
In New Zealand and Australia this grace period is one year. The United States similarly offers a one year grace period. China and Europe have stricter requirements, offering a six month grace period only if the disclosure was without the consent of the inventor, or at certain specified events.
After filing
In New Zealand the first step is generally filing a provisional application. You then have one year to turn this into a complete application. When you file your complete application, you can add in additional features that you’ve worked on in that year. This is the last opportunity to add any new features to your application.
After filing your provisional application, you can start sharing your discovery with the world. However, you should be mindful of what you share. If you publish anything that discloses additional features that you want to add to your complete application, you may not be able to get patent protection for those features. The safest option is to wait until after filing your complete application before you publish your results. If you do choose to publish before filing your complete application, make sure that you only publish things that are already completely covered by your provisional application. Your patent attorneys can review any publications before submission to ensure they do not disclose additional features.
Conclusion
It can be daunting to enter the world of research commercialisation. The twin pressures of getting patents and publishing papers can seem impossible to navigate. But with careful planning you can get the IP protection you need while still publishing your research.
If you have an idea that you think might be commercialisable, or are just looking for advice, don’t hesitate to get in touch. The patents team at AJ Park has a depth of technical knowledge, including over a dozen PhDs in biology, chemistry, physics, and engineering. We can match your project with the right expert to help you bring your invention into the world.
