Publish and Patent? You CAN Do Both

Publish and Patent? You CAN Do Both

Nov 30, 2012

I review many of the published research or research-focused press releases and news articles coming from UNH. As a publicly funded state institution, I recognize that publishing research and disseminating information is not only the faculty’s highest concerns, but also UNH’s top priority. However, commercializing UNH’s innovations is an integral part of the University’s long-term mission. 

Many researchers may feel that filing a patent application compromises their academic integrity – that they should purely publish their work – that it is a one or the other scenario. I’m here to tell you that with proper planning and early ORPC involvement, researchers can both publish and seek patent protection for their innovations.

ORPC is constantly balancing the needs and desires of our faculty to publish with the University’s emphasis on commercializing the research conducted on campus. The need and ability to publish must always come first, but publications and other disclosures can have drastic ramifications on the patentability prospects of a particular technology. With that in mind, ORPC is most concerned with limiting what are referred to as, “enabling public disclosures.” With a little bit of planning, ORPC can assist faculty to successfully publish their work AND preserve their patent rights at the same time. 

A disclosure is “public” if interested members of the public could obtain access to the disclosure of the innovation if they so desired.  It does not matter whether someone actually obtained access, but simply, whether someone could have. In an academic setting, this usually occurs in research presentations at conferences, journal submissions, grant applications, personal or laboratory blog posts, thesis or dissertations, and meetings or conversations with any non-UNH person where there is no confidentiality agreement in place. 

To complicate matters even more, the America Invents Act will be turning US patent law on its head in a few short months.  Currently, and up until March 16, 2013, an applicant can receive a patent to a claimed invention so long as they (or anyone else) has not publicly disclosed the innovation more than one year prior to the date of the application. An enabling public disclosure has historically started this clock – that an inventor has one year from the date of the enabling public disclosure to file for patent protection.

The rest of the world, however, does not provide this one-year grace period. Any disclosure of the claimed invention prior to the filing date automatically removes eligibility to receive a patent. As soon as a researcher publicly discloses their innovation, they lose international patent rights and their work can no longer be protected by a patent in the international market. 

The easiest way for a researcher to protect their intellectual property rights (and UNH’s) is to disclose the innovation (/research/forms/intellectual-property/invention-process) and to work with ORPC. Disclosing to ORPC is not considered a public disclosure. We are always interested to hear about the research occurring on campus, but the general rule of thumb that we use is that when research produces data or results that the researcher thinks are innovative, we want to encourage them to contact us as soon as possible. If we think a patent is possible, and that there is a commercial market for the technology, we can take steps designed to preserve future patent rights (both in the US and internationally). 

Other Considerations to Prevent Inadvertent Enabling Public Disclosures

  1. Consider sending ORPC journal manuscripts, speech notes, or poster images prior to submission or public display. 
  2. Keep us informed when industry contacts you about your research.
  3. In a state or federal grant application, follow the agency-specific guidelines to identify the pages that may describe potentially patentable subject matter and write “CONFIDENTIAL” on each of those pages.
  4. Request that the library not make a thesis publicly available until patent protection is in place.    

With a little bit of planning, it is possible to publish, collaborate and maintain your academic freedom while preserving available patent rights. If you have an approaching publication, presentation, or other potential disclosure, please do not hesitate to contact us (/research/orpc). Please also feel free to reach out to me, Tristan Carrier at tristan.carrier@unh.edu or (603)-862-2022, with any questions. 

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