Relaxing the Tension Between Publishing and Patenting: Practical Hints and Tips
Article Apr 17, 2018 | A.A. Thornton & Co - Intellectual Property Law Firm
In the first part of our article on this topic, we outlined some patent-related ramifications of publishing your research and development prior to filing a patent application. This second part provides you with some practical hints and tips for drafting your paper, helping you to avoid potential issues that can arise.
Plan well in advance of your proposed submission
Ideally, advance planning is key. However, you may have very short notice of an article submission deadline and want to file a patent application before publishing. In this case, it is important to take care regarding different time zones: for example, if you are based in Australis and file an Australian patent application coincident with when your paper will publish in Europe, then the publication date of your paper may be the day before the date of filing the patent application. Inadvertently, your paper is then prior art and counts against your patent application for both novelty and inventive step purposes (discussed in part 1).
Although it is generally the case that merely submitting a draft article to a publisher is assumed to be done under confidentiality terms and would therefore not (until published) count as prior art against a later-filed patent application, this assumption should be checked.
These issues suggest that the recommended procedural steps prior to submitting a draft article for publication should be undertaken several weeks before the submission deadline. If you work in a large organisation, there is likely to be set procedure to follow. Even if not, it is important to ensure that all relevant stakeholders are consulted prior to sending off your first draft. These stakeholders will depend on your organisation and circumstances, but usually involve your line manager and anyone funding the R&D. Others may also have a commercial or legal interest in your work, for example, agreements setting up a joint venture or research collaboration may require that any proposed publication (also patent application) be approved by the other party prior to submission.
This approval process may be iterative, as various amendments may be needed before the final text is agreed. It is important not to substantively change your disclosure from that approved – especially during any ad lib. question and answer sessions that may arise after an oral presentation. This is because disclosure of additional details may have a significant impact on the patentability of the R&D you are disclosing, and may render obtaining grant of your patent difficult or even impossible.
Article drafting tips to avoid difficulties for your current patent application(s)
Assuming that you have already filed a patent application on the subject-matter of your article, remember that the patent is unlikely to be granted, yet. The patent office needs first to rigorously examine your application before deciding whether or not grant is allowable.
A main focus of patent office attention will be on whether or not you have demonstrated an inventive step, namely: whether or not the patent application relates to subject-matter that is not obvious over previously-known subject-matter. In view of this, it is important that your article avoids explaining away an inventive step on which granting your patent may depend. This ‘explaining away’ mostly happens when a very detailed description of the prior art in your proposed publication appears to render obvious the technical contribution that your research has made to the field.
We therefore recommend that, when drafting your article, you avoid giving the impression that your idea or results could have been gleaned from: either (i) a simple combination of the teaching from more than one earlier publication; or (ii) the teaching of just one earlier publication in light of the common general knowledge which anyone in your field would have.
We also recommend including information showing that much effort, additional thinking or technical know-how – and even some serendipity – was required to bridge the gap between the prior art (as you describe it in your article) and what you newly disclose in your patent application.
Article drafting tips to protect future patent applications
Future R&D may build on the work described in your article, and may give rise to further patent applications. Remember that your currently-proposed article will become prior art to later-filed patent applications. Hence, these later applications will have to be patentable – not only over the prior art you are now describing – but also over your presently new disclosure that will become published (part of the prior art) via your article.
Therefore, suggestions about what future work could be undertaken should be minimal and very general; mention of specific details of processes, agents, uses or indications to be explored should be avoided.
Relaxing the tension between publishing and patenting
These two articles have briefly reviewed how patenting and publishing are both important, particularly in the pharmaceutical field, and it is therefore necessary to take steps to relax the tension between needing to preserve novelty and non-obviousness for patenting, on the one hand, and making known the results of your R&D, on the other.
Relaxing the tension involves planning early, in terms of both the proposed article and the patenting strategy. Such plans should involve key stakeholders, who should be kept updated, and any legal or commercial obligations surrounding the work need to be taken into consideration.
When drafting an article for publication, the tension can be further relaxed if the following guidelines are born in mind:
- Avoid giving the impression that everything undertaken during your R&D was both obvious and expected!
- Omit or code unnecessary details, such as compound structures or dates of work.
- Generalise or omit suggestions for further work, particularly if you (or a collaborator) may want to patent those results.
- Even though you may have already filed a patent application that covers the work to be published, you may subsequently want to file for related patents. Since this patent application will itself not publish until 18 months from its initial filing date, consider deferring publication of the current work until after that. This strategy provides a full 18 months for filing related patent applications before your first application and your article become prior art to your future applications. However, if your article publishes sooner, the advantage of the 18 months’ patent ‘secrecy’ period is lost, as similar subject-matter anyway becomes prior art through your article.
Finally, take heed of the first Duke of Wellington, lest you “publish and be damned!” and – especially if in doubt – employ best practice by taking professional advice, for example from a Chartered and/or European Patent Attorney.