When scientist(s) invents something new, either an item or a process, s/he is advised to patent the invention and publish the research work (leading to the invention) later. Conversely, recent developments and court cases on patent ownership show that publishing a paper on the invention subject before filling a patent application is a 'first claim' to the ownership of the original idea that led to the invention. It was further advised that the publication if peer reviewed is a credit
Patent first and publish later or Publish first and Patent later: Which one would you support and why?
What are your thoughts on this trending discussion
Publishing prior tp patenting may result in the loss of patent rights if one does not understand the strict patenting timetable and the One Year Grace Period .
The USPTO Manual of Patent Examination Procedure (MPEP) states "If one discloses one's own work more than 1 year before the filing of the patent application, that person is barred from obtaining a patent. In re Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982)."
In other words, if you disclose your research for peer review and publication - and it takes 6 months for that review or release of publication, you may only have 6 months after publication to file the patent application - with some possible exceptions.
Further: "Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant." De Graffenried v.United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990).
There are other important considerations regarding international patent filings that could also effect patentability.
If the invention is commercially important (rather than merely a resume objective for the inventor), its best to discuss your specific situation with a competent patent attorney prior to publishing your research.
* As an intellectual property expert, I have about 50 patents and multiple published papers, but I am not an attorney. The above is not to be considered legal advice.
Publishing first can boost the argumentation for the patent appeal. Moreover, as you have also mentioned, peer-reviewing can be helpful to understand the work's potential and etc.
Best
Ibrahim
Publishing prior tp patenting may result in the loss of patent rights if one does not understand the strict patenting timetable and the One Year Grace Period .
The USPTO Manual of Patent Examination Procedure (MPEP) states "If one discloses one's own work more than 1 year before the filing of the patent application, that person is barred from obtaining a patent. In re Katz, 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982)."
In other words, if you disclose your research for peer review and publication - and it takes 6 months for that review or release of publication, you may only have 6 months after publication to file the patent application - with some possible exceptions.
Further: "Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant." De Graffenried v.United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990).
There are other important considerations regarding international patent filings that could also effect patentability.
If the invention is commercially important (rather than merely a resume objective for the inventor), its best to discuss your specific situation with a competent patent attorney prior to publishing your research.
* As an intellectual property expert, I have about 50 patents and multiple published papers, but I am not an attorney. The above is not to be considered legal advice.
Thanks to all for their views. If you wish to file patent application of your invention than you can do publish it but within one year of your publication you have to file patent otherwise, if it is more than one year, novelty will be lost of your invention as per patent act. So it is better submit patent application then go for publication.
I definitely agree with Andy. A patent examiner's priority search includes both patents/applications and articles/commercial products in the public domain. If you "teach" your invention in an article or offer it for sale you must file within a year of publication/offer in order to retain your rights to the novelty.
Generally, Grant of Patent take longer period. It is suggested to first file an application for registration after that go for publication.
I agree with Andy. Moreover, publishing first may lead to loss of patent rights in various other jurisdictions (those not having provision of one year grace period in their Intellectual property statute). In such jurisdictions, inventor's own prior publication may become prior art for their later filed patent application.
Looking at this from competition perspective, disclosing an invention prior to filing may encourage competitor to exploit the invention/file patent for a similar invention with slight tweaking/modifications, even before the inventor could file - and thus may lead to loss of inventor's right over the core invention.
*These are purely my views and not that of the firm/company I am associated with. Also, this should not be construed as a legal advise.
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