How to Publish AND Protect Intellectual Property Rights
Patenting in the Context of Publishing
The UIRF recognizes that the cornerstone of academia is publication; that being the case, inventors should be aware that public disclosure of inventions can reduce or eliminate patent rights. We ask researchers to contact us before publishing or publicly presenting a new finding that discloses subject matter relating to a possible invention. We can work together to ensure that as many intellectual property rights as possible are retained while at the same time taking into consideration publication needs. The UIRF will never ask researchers to delay publications or presentations but will work with researchers to file necessary applications in advance of deadlines.
The US Operates on "First to Invent", Elsewhere it's "First to File"
The legal guidelines for patent protection currently differ between the United States and much of the rest of world. Many other countries operate under a "first to file" system. This means that the person winning the race to the patent office will be the one entitled to obtain any granted patent. The United States, in contrast, operates on a "first to invent" system. In the United States, you may not be granted a patent unless you are truly the first inventor of an invention.
Most foreign countries require "absolute novelty", meaning that the invention must not be previously known by the public, been sold or offered for sale, or been made available to the public in ANY way prior to the patent application filing date. If any of these events occur, a patent will not be granted. The United States provides a one year grace period after publication, sale or offer for sale during which a patent application may still be filed.
Public Disclosure of Unprotected IP Can Kill Patent Rights
The types of disclosure that can put patent protection at risk include:
- Presentations at conferences, whether or not the presentation includes printed handouts
- Research abstracts presented in a public forum. This includes research abstracts that are published before meetings either online or in printed materials
- Posters shown at meetings (considered public publications)
- Cataloged thesis or dissertations
- Posting of information on websites. This includes postings on your individual lab web sites. If it can be accessed through the web, it is considered a public disclosure
- Publications. Publications are considered public disclosures the minute they become available to the public. For many publications, this occurs when published online in advance of the printed journal
- Published grant applications
- Meetings with company representatives or colleagues outside the UI where information is disclosed without a confidentiality agreement
It’s Simple to Preserve Rights
The UIRF strives to achieve maximum patent protection in areas where world-wide markets are available, and requests that potential inventions be disclosed well in advance of any publication or disclosure, if possible. With advance notice, we can preserve IP rights through non-disclosure (NDA) or confidential disclosure agreements (CDA). NDAs and CDAs legally require signees to keep the information given to them under the agreement confidential. When sending confidential information under a NDA/CDA, we recommend that all information be provided in writing, with the word "confidential" written in conspicuous lettering on each page. Our template NDA/CDA form can be found here. The licensing professionals at the UIRF can tailor an appropriate NDA/CDA and arrange for execution.
Research Materials also Need Protection
Legal rights to patentable and non-patentable material may also be lost if the appropriate steps are not taken. Researchers who wish to send materials to persons off campus should complete a material transfer agreement (MTA). An MTA grants a receiving party the right to use the transferred material as long as certain restrictions, i.e. original researcher is always acknowledged, receiving researcher does not send to others, etc. These agreements may also protect the confidentiality and future use of the material. In the case of sending materials to commercial companies, the MTA may include payment terms. Licensing professionals at the UIRF can assist in proper application of an MTA.
Helpful Guidelines
- Discuss with the UIRF well in advance of upcoming presentations about new discoveries that have commercial value. Intellectual property strategies can be assessed without hindering the dissemination of your research
- Keep track of dates of public presentations or publications, even if the presentation or publication is largely internal to The University of Iowa
- Tell patent attorneys drafting the patent application about any known disclosures or relevant art not disclosed on the invention form. If the attorney is misinformed or not informed, it is impossible for them to make the best possible case for the patent application
- Deliberate failure to notify the USPTO of a prior disclosure or know reference may invalidate the patent