Basics of Publishing Before Patenting

In the world of research institutions, whose primary mission is to further scientific knowledge by conducting fundamental research and disclosing the results to the public, the first-to-publish grace period between publishing and patent filing established by the America Invents Act is significant. 

According to the USPTO final rules on the matter, published February 14, 2013, the key to taking advantage of the “grace period” under section 102 sub (A) is not what subject matter is disclosed in the earlier publication but by, for or from whom the subject matter of the earlier publication is disclosed. The final rules state:

“The Office will not assert a prior work as a basis for a prior art rejection if it is apparent from the prior work that: It was less than one year from the effective filing date, names the inventors as authors and does not name authors not named as inventors.”

So, if the prior work names more authors than the patent application names as inventors the prior work can be used as a basis for rejection under new section 102. This presents a real problem for academic publications and the traditions surrounding naming of authors. A great many academic publications list as authors, persons who did not make an inventor’s contribution to the subject matter disclosed in the article. Very often individuals who are not inventors, as defined under law, have been named as coauthors in academic publications. Often department chairs, research assistants, laboratory students and others who have contributed to the publication in some way are named as coauthors even though the contribution they have made would not make them an inventor as defined by law. This action, if continued under the new patent law, can eliminate any chance of patent protection for inventions that are disclosed in academic publications.

This suggests two necessary shifts in paradigm for academic researchers and institutions. First, the best protection against loss of patent rights by academic publication under the new law is to file a patent application prior to any academic publication. This can be a utility patent application or a simpler provisional patent application but should disclose the subject matter of the publication is at least as much detail as the publication. This may require a major shift in mindset for those who work in the “publish or perish” environment. But, patent applications generally remain secret for at least eighteen months and generally will not become public until after a related academic publication.

If researchers intend to rely on the “grace period” under section 102 sub (A), they should do so with great caution. Only those who have made a contribution that would qualify them as an inventor should be named as authors of the publication. This is difficult to do prospectively since inventorship is based on the subject matter that is claimed in the patent application and the writing of claims is a complex and arcane task done by patent attorneys. Even so a patent application should be filed as soon as possible after publication to protect, to the extent possible, against prior art that may later arise in the form of publications or patent applications by others.

It is also important to keep in mind that while the new grace period provides limited protection against a patent applicant’s own publications being applied as prior art against a later filed patent application, the grace period provided no protection against publications by others on the same or related subject matter. Publications by others that are published after the a patent applicant’s own publications are still considered prior art that can be applied against the later patent application so long as they are made public prior to the filing of the patent applications. Technology Transfer Organizations would benefit from setting up processes to review academic research intended for publication before it is published and to allow for the rapid filing of provisional patent applications if the publication is thought to disclose patentable subject matter which we would expect to generally be the case. Researchers who publish should be educated as to the changes in the law and the limited protection available under the new one-year publication grace period. 

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