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 American Invents Act (AIA)
Effective as of March 16, 2013, the US Patent and Trademark Office will adopt "First Inventor to File" system, which is a significant change from "First to Invent." In most instancese, the AIA will make patents more difficult to obtain and easier to defeat. Under the AIA, Proof of when the inventors carried out experimental work or when they discovered their invention will have essentially no value for applications. Nor will such proof be useful to others to attack patents subject to the AIA. In any contest between the first to invent and the first to file a patent application, the first to file will virtually always win, for applications and patents subject to the AIA. Many other countries already have been operating 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 AIA also expands the scope of "Prior Art" which is all the information that legally existed before an application for the cliamed invention was filed. Prior Art has an "effective date" (not to be confused with the effective date of the AIA). Any information that is prior art can be used to show that an application or patent filed later is unpatentable or invalid. The AIA expands what is prior art in severl respects.
- Foreign public use or sale of the invention, which was never prior art before, will become prior art
- The effective date of many Patent Corporation Treaty (PCT) published patent applications as prior art will be earlier than before. Under pre-AIA law, a PCT patent application (international patent application) published in a foreign language was prior art as of its publication date, and many English-language PCT patent applications were prior art as of the PCT filing date. Under the AIA, many PCT patent applications will have as the prior art date the first day a corresponding patent application was filed anywhere in the world.
- A US patent application based on an earlier foreign patent application will have the earliest US or foreign filing date in the world as its effective date
These new rules can make the effective date of prior art patents and patent applications earlier by up to 18 months.
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.
- 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