How to avoid inadvertent publication

We are grateful to BTG plc for permission to publish extracts of this important publication for University of York staff. For more information on the company, visit the BTG plc website .

Introduction

Academic reputations are built up by publication of research results. Patent applications can be ruined by premature publication of research.

At BTG, we have a wealth of experience in squaring this circle, and this booklet is intended to help you, the academic researcher, to avoid some of the pitfalls that might prevent your invention from being patented. If your invention cannot be patented, you are less likely to be able to earn money from it.

One of the conditions for obtaining a patent is that the invention is 'new'. This means that, on the day you file your patent application, the invention must not have been published.

What constitutes publication?

An invention counts as published if it forms 'part of the state of the art'. In European patent law, the state of the art is defined as 'everything made available to [even one member of] the public [anywhere in the world] by means of a written or oral description, by use, or in any other way'. (The elaborations in brackets are BTG's). Elsewhere, most countries have broadly similar provisions.

In this booklet, 'publication' and 'published' are used as shorthand to express the above concept.

Examples of publications

Some publications (in the sense used in this booklet) are easy to understand in principle:

  • Learned papers, journals, magazines
    These count as published on the first day that an ordinary reader could get hold of a copy. BTG fought a case for an academic inventor and won on just this point. The European Patent Office had at first ruled that publication occurred on the day that the journals arrived in the distribution warehouse from the printers. However, BTG showed that, on that day, the journal was available only to subscribers and then only at the editor's discretion. This was held not to be properly available to the public.
    The cover date printed on the journal is not always decisive.
  • Abstracts
    Conference organisers often ask the main speakers to submit abstracts in advance. In itself, this is harmless, but sometimes the abstracts are sent out to all delegates before the conference, or are available for collection from the registration desk the evening before the conference starts. Such distribution counts as publication, and any researcher who means to file a patent application just before his (or her) conference speech should check with the organisers whether any abstract will be distributed in advance.

Some types of publication are more problematic, for example:

  • Theses
    If the oral examination of the thesis is in public, the thesis counts as published by the examination. If the oral examination is in private and the thesis is shelved in a library, the thesis counts as published when a reader could first get hold of it (not when the first reader actually does) - and this date may differ from the formal cataloguing or accession date. The thesis also counts as published if the supervisor lends it to someone without the borrower knowing that it is to be kept confidential.
    In many universities, a thesis can be embargoed, but, to be effective, the embargo must have no special exceptions (such as "we always let the Emeritus Professor come in and see the theses").
  • The Internet
    If you post a message describing your invention on a site or to a public newsgroup, this message will not only count as published on the day it is posted, but if, say, it is posted in Britain in the morning and is electronically available at locations immediately to the east of the International Date Line, it will be published the day before you posted it. The law has not yet really caught up with this possibility! Removing a message that you had previously posted does not alter the fact that it has been made available to the public.
    Messages to restricted newsgroups are also likely to count as publication under the view [see (h)] that a secret known to a significant proportion of the relevant public has ceased to be a secret.  If you use the Internet to Email to someone a message describing your invention, encryption is recommended to counteract the risk that Internet transmission is potentially leaky. At BTG, we do not normally use Email via the Internet if privacy is essential.
  • Poster displays
    Yes, these count as publication. Beware, too, the poster display on the corridor outside your laboratory. Unless yours is a very untypical university department, all sorts of visitors will be wandering around, and your corridor is effectively a public place.
  • Exhibitions and open days
    Hardware on show at an exhibition or open day counts as published to the extent that a specialist looking at it would understand what he (or she) was seeing. Concealed characteristics are not considered to be published, unless the hardware comes into the possession of someone who is freely permitted to dismantle it.
  • Oral and casual disclosures and casual disclosures
    At a conference, if you depart from your prepared text - which you are happy to publish - to answer a question from the floor, that departure too is publication.

Remarks at small-scale seminars and even a conversation round the departmental coffee machine are publication, unless everybody present knows that what you are saying is to be kept secret. But see the next paragraph:

  • Confidential disclosure to many people
    Even if you follow all the right precautions, a confidential disclosure made to too many people may cease to count as confidential. The authorities have taken the common-sense view that a secret known to a significant cross-section of those active in that technical field is, in reality, no secret at all.
    Realistically, for any of the above cases to matter, the 'other side' (usually an infringer wanting to have your patent cancelled) will have to prove that the thesis was prematurely released, prove when you made your Internet posting, prove that the poster display prematurely revealed the invention, prove what you said at the seminar or whatever, as the case may be. Nevertheless, if serious money is at stake in a patent dispute, the other side will go to great investigative lengths in the hope of discovering some such flaw in your patent.

Publication after a patent application - a warning

Under a landmark decision by the European Patent Office, it can be dangerous to publish an idea covered by a patent application less than 12 months old. The background was that a line of research had led to the filing of a patent application, and the inventor published (but no more than was in the patent application). The research continued, and a second, more comprehensive, patent application was filed within a year of the first one, under the 12-month rule familiar to users of the patents system.

The European Patent Office held that, where the researcher's further developments could be considered obvious in the light of his publication, or where he had broadened the scope of his invention, the 12-month rule did not save him and he could have a European patent for only what was in his first application.

Judges in Britain and Australia have since confirmed that the European decision applies equally in those countries (reversing the contrary view, which was widely held until 1995).

For example:

  • January 1997:
    Researcher files patent application on a new and inventive chemical process having steps A and B.
  • October 1997:
    Researcher gives poster display, disclosing only A+B.
  • November 1997:
    Researcher discovers that feature C (a specific temperature range not inventive in its own right, or a particular compound from a series of catalysts) is advantageous. Researcher also discovers that A can be done in a wider variety of ways A*.
  • December 1997:
    Researcher files patent application on A*+B+C, claiming his January 1997 priority, applying for broad cover on A*+B and also applying for more specific cover on A*+B+C, A+B, and A+B+C.

Result:
Patent will be granted on A+B. Cover on A*+B+C and on A+B+C (both first applied for in December) will be refused as obvious in view of what was already published that October. The broader cover on A*+B will also be refused for the same reason. And this, even though the researcher never breathed a word about C, or about broadening A to A*. This means that, if the researcher's first patent application (A+B) should turn out for some unforeseen reason to be defective, or if A is inferior to other ways included in A*, he would be left with no useful patent at all.

BTG's advice has to be that any publication, even of matter already safely filed in a patent application, can damage your chances of protecting developments, unless the publication is at least 12 months after the first patent application, after which time nothing can be added to the patent application text.

We recognise that this advice can be difficult to follow in a university, but the time to progress a patent application to the point where publication is acceptable can be justified by the prospects of the financial return on a commercially successful invention. And a patent application date is as good as a 'paper received' date for academic priority purposes.

Published? All may not be lost

Although BTG will not normally wish to handle an invention that was published before any patent application was filed, there may be exceptional cases - for example, if the USA is a significant market for the invention. The USA is special in that a patent application may be filed there within a 'grace period' of up to one year after publication by the inventor of the invention. Other 'grace period' countries are Japan (only 6 months, and then only if the publication is notified to the Patent Office on filing the patent application), Canada and the Philippines.

A 'grace period' merely removes your own publication from the stock of all literature available against your patent. It gives you no immunity from the effects of other people's publications or patent applications. For patent purposes, your priority date is the date of filing your patent application.

Using undergraduates for research

An undergraduate who is asked to undertake research may come up with a valuable invention. Did the undergraduate realise this possibility when - then still perhaps a minor - he (or she) applied to join the course of study? In particular, can he be bound to an agreement to keep his work secret? Since the undergraduate has no real option to refuse to do the research requested by his department, BTG suggests, from the reasoning in the next section, that the department cannot fairly expect him to keep any information that arises secret. By contrast, a postgraduate can be expected to understand and accept the implications of making inventions when he signs up to research at the university.

How to keep something confidential

The person with whom you intend to discuss your invention must know in advance that your disclosure to him (or her) is meant to be confidential, and he (or she) must agree to keep it confidential. It follows that he must have the option of going away without hearing or seeing your disclosure. Individuals and companies can have many legitimate reasons for not wanting to be burdened with incoming confidential information, and cannot be expected to receive unsolicited information indiscriminately and keep it confidential. Although confidentiality can be inferred from the circumstances of a disclosure, it is much safer to record your mutual rights and obligations through a written Confidentiality Agreement signed in advance by the person who is to receive the confidential information.

The person to whom you choose to make your confidential disclosure should be trustworthy. Although there are provisions for protecting your rights if your invention is disclosed against your will, those provisions are not an infallible safeguard. For example, they carry time limits counting from the wrongful disclosure, and you may not learn about the disclosure until is too late.

Also, the person whom you choose ought not to be a potential customer for your invention if you can avoid it.