Read our COVID-19 research and news.

Patent First, Publish Later: How Not to Ruin Your Chances of Winning a Patent


Finally! After weeks of toil and frustration, your hard work at the bench has paid off--the mutation-screening device really works! It's time to write that groundbreaking paper, make a few presentations, even conjure up some ideas for another grant application. It's time to unwrap that baby and show it to the world! Things are looking up--at least for the time being. But wait! Did you know that by publishing, presenting, and applying for funds, you might be robbing yourself of a patent?

The U.S. patent system bestows legal rights upon those who divulge their inventions to the U.S. Patent and Trademark Office (USPTO) in the form of a patent application. According to U.S. law, a patent cannot be obtained if an invention was previously known or used by other people in the U.S., or was already patented or published anywhere in the world. Furthermore, publicly using or selling an invention more than 1 year prior to filing a patent application completely bars you from ever winning a patent on that invention.

For instance, actually using your mutation-screening device to analyze blood samples in a hospital lab constitutes a "public use." Similarly, striking a deal with a corporation that wants to buy your invention can spell bad news for your quest for a patent. If you've done either--used or sold the invention--more than 1 year before filing, you may as well give up hope of ever getting a patent on such intellectual property.

Less formal communications also can mark the beginning of the end: Chatting about your invention in a hotel lobby is considered a public disclosure, as is slapping your data onto a Web site, giving a departmental seminar, tacking up a poster, or publishing an abstract. Even winning a grant can prematurely end any potential patent rights you may have had, because your grant abstract and the application itself are usually published--or at least made accessible to the public. Remember: The clock starts ticking as soon as you start talking about your invention!

Consequently, in the understandable rush to get published and funded, scientists tend to spill the beans too early and in too much detail for them to ever win a patent. Keep in mind that a patent does not give you the right to make your invention--it gives you the right to stop others from making your invention. Therefore, if you don't file a patent application within a year of disclosing it to the public, you may lose the right to stop others from exploiting your invention for their own gain.

If this 1-year timeline seems harsh, consider the situation abroad: In Europe, for instance, there is no 1-year grace period--the chances of winning patent protection is lost the instant an invention becomes public. However, most European scientists are well aware of this "first to file" stipulation and file their patent applications before publishing or giving a presentation.

And therein lies the key to avoiding scientific and financial heartache: File a patent application before you publish, speak about, or present your work and before you apply for grants. Stroll down to your institution's Tech Transfer or Intellectual Property (IP) offices and develop a strategy on how best to pursue patent protection while continuing to dazzle the scientific community with your expertise and insight.

Most universities require that their faculty and employees sign an "invention disclosure" form used to report all discoveries, which ultimately become assigned to the university. By not filing a patent application you can inadvertently lock your university out of potentially valuable money-spinning activities, such as carving a niche in the market or negotiating lucrative licensing deals.

But to flourish in the scientific community, you must continue to publish papers, present at meetings, and win grants. However, there is some leeway: If your presentation or abstract is not sufficiently detailed to actually enable someone to make your invention, then that disclosure may not harm your chances of getting a patent. So, for instance, instead of spelling out each and every detail of your research when giving presentations, broadly outline the events that led to your invention. Consider using codes to describe your data or the conditions you used. Talk with your in-house legal agents and lawyers about how best to organize your presentation. It may go against everything that you've been taught about enlightening the scientific community, but at the outset, being vague and general will be more beneficial patent-wise than being precise, explicit, and momentarily famous.

These precautions do not stop you from pursuing scientific success. Filing your invention as a patent application and then publishing in a journal needn't mean double the work: You can still write your groundbreaking paper--just pass it by your IP department instead of sending it out to review. Patent agents working at (or with) your institution's IP department can use that same manuscript to file a patent application. The same goes for grant applications--give a draft to your patent counsel, let them file an application, and then seek out those funding opportunities.

All it takes is a little foresight, planning, and vigilance to have the best of both worlds: Patent first, publish later.