This section aims to provide our target users with a small web module to enhance their IP knowledge. It targets researchers or persons who need basic IP knowledge at work.
Each module will tackle a specific subject using material and examples available from the Web.
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Disclosing your invention to the public
What you should know
Researchers are frequently pressed to publish their research results as quickly as possible as the value of their research is often measured against earlier publications in prestigious scientific journals or at conferences. It is important to be aware that such a move will prevent the researcher from obtaining a patent on the disclosed invention in all countries where the so called "grace period" does not exist. This happens because the publication will be considered to destroy the novelty of the invention, as it took place before a patent was filed.
Countries which recognise a "grace period" include the United States. There, an inventor can apply for a patent even if he has disclosed his invention during a one-year period prior to filing.
In no case should this exception be considered an incentive to publish before filing a patent as the invention's potential market is certainly not limited to the USA.
A European and International debate on the grace period
As you can imagine, the introduction of a grace period is repeatedly discussed in political circles. This period could be advantageous to small and medium-sized innovators, who before investing large amounts of money in protecting their rights, could start testing the commercial viability of their invention by marketing it without jeopardising the acquisition of exclusive rights.
Opponents argue that this period would increase legal uncertainty as the exception would mean extending the period when it is unclear whether an invention is protected or not. In addition, introducing this exception would increase the difficulty of assessing what prior art applies to a patent application.
This debate remains open.
Defensive publications: an alternative strategy
Because a disclosure to the public can destroy any future patent rights, some companies or organisations voluntarily disclose research results to the public to prevent anybody - including themselves - from acquiring patent rights on the disclosed invention.
This is a sound strategy if you definitely do not want to commercially exploit your invention based on exclusive rights. There are even specialised companies ensuring an appropriate dissemination of these publications to make sure they will be considered by patent offices assessing prior art information.
To sum up
You must keep in mind that publishing your research results is not without its repercussions as it can prevent you from obtaining exclusive rights on your invention. On the other hand, if your intention is to freely disseminate your results to the public, revealing your work in a journal or at a conference can be a sound approach as it will prevent any future appropriation of your work. However, it is likely that patents will be acquired on new and inventive improvements based on your freely available results.
Further reading
Publish and be damned, from the British technology Group
www.btgplc.com
Regarding the grace period debate, check the various reports on this page
europa.eu.int
About defensive publications
www.nature.com
www.carmodylaw.com
A patent story where the grace period was used: The Cohen and Boyer Patents, check the bottom table.
www.twobirds.com
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