How to publicly communicate the results of your research without diminishing your chances of obtaining a patent
Research activities may lead to the invention of new, patentable products or processes. In most cases, researchers publish the results of their work in specialized academic journals, thus helping to disseminate information, and even to improve their invention based on comments from the academic community.
However, in order to maximise the chances of obtaining patent, and in particular, in order to comply with the requirement that the invention is new, it is essential to follow some good practices in relation to the public communication of your findings. It’s a topic that we talked about during the legal workshops organised as part of the first edition of Spin Off, which took place this spring. The conversations I had with the program’s participants made me analyse this issue more thoroughly as other researchers may be in similar situations and might benefit from this information.
According to Romanian law on patents, the invention is new only if it is not part of the state of the art. Any information which is publicly available at the date of the filing of a patent application is part of the state of the art, and therefore cannot be patented. Access to an information means that knowledge has been disseminated to public in any form or format without any confidentiality constraints. Additionally, the public comprises even as little as one person who is free in law and equity to use the information disclosed. Therefore, the essential prerequisite for patenting an invention is making sure that the information forming the invention is kept secret until applying for a patent.
Thus, there are a series of disclosures that destroy the novelty of the invention, which would make it unpatentable, even if those disclosures originate from the inventor or from other persons. The publication of the invention in a specialist academic journal is a novelty-destroying disclosure as through publication, the public is given access to the information intended to be contained in the patent application. For this reason, it is essential that the findings that led to the creation of the invention are kept secret until a patent application is filed.
It must also be borne in mind that the protection afforded by a patent is territorial, the rights being granted to the inventor only in a certain jurisdiction. Thus, confidentiality of the information underlying an invention must be ensured to prevent the patenting of the invention simultaneously in several jurisdictions by unauthorised persons.
In this respect, the state of the art also includes any patent application published anywhere in the world (because, through that publication, the information becomes publicly accessible), as well as patent applications submitted to an international or European office, and which designates Romania. The latter are recognised as belonging to the state of the art, retroactively, from the time of filing, but only if they end up being published.
Given that until publication it is impossible to verify which international or European patent applications are part of the state of the art, it is even more important to keep the information about the invention secret during the research stage.
To sum up, you cannot patent inventions that were disclosed prior to the filing of the patent application through:
- publication in a specialist academic journal;
- inclusion in a patent published in any jurisdiction, irrespective of the territories designated in the application;
- inclusion in an international or European patent application which designates the territory where protection is sought, from the date of filing of the application (if the patent ends up being published).
If the invention is to be protected in several jurisdictions, and in order not to destroy its novelty, the routes that inventors can follow are:
- either submitting a single application for the granting of the patent to an international (WIPO) or European (EPO) office designating several jurisdictions; or
- submitting individual patent applications at the same time to a several national offices (in the case of Romania – OSIM) for each state where the invention is intended to be protected.
With the emergence of local rules on the establishment of spin-offs, topics such as the above will become common in the minds of researchers - so if you work in the field of R & D and have other legal curiosities, leave me a comment.