How to patent your research and still write your thesis
A patent is an exclusive right granted for an invention, such that others are excluded from making, using, or selling the invention for a stipulated period. For this right, the inventor needs to publish a public disclosure of the invention. Let’s say you have come up with a cool innovation. In today’s hypercompetitive scenario, you want your innovation to be “protected,” not scooped. You also want to benefit from others using your new technology. This is where patents come into the picture. Patents provide legal protection to the inventor. Patents also benefit the society by providing public access to technical information about these inventions, thereby accelerating innovation.
Patent systems differ across the globe, but three “patentability” criteria lie at the heart of all patents:
- Novelty: The invention must be new and not previously disclosed publicly.
- Inventiveness: The invention must be “non-obvious” or have an inventive step.
- Industrial applicability: The invention must have practical utility.
The most common type of patent is for utility applications, which cover processes, materials, and devices with innovative and useful functions. Next, design applications include the shape and configuration of an object. Further, in some countries, like USA, even distinctive plants are patentable.
While research papers in peer-reviewed journals remain the cornerstone of scientific communication and career advancement, patenting practical innovations is a great way to translate research into real-world applications.
Addressing the patent or publish quandary
The process of patenting inventions is complex, and researchers need to understand how patents and publications affect each other. Suppose you have invented a potentially patentable device during your research stint. You are also approaching your thesis submission date. What takes precedence? By publishing your paper or thesis before filing a patent, you jeopardize the novelty requirement. However, filing a patent application does not prevent you from publishing your research, as applications are kept secret for a specified period (typically 18 months; might vary by country). This simply means a delay in publishing your thesis.
Many universities and research institutions have policies in place that cover inventions and related property rights. To avoid early public disclosure, theses describing patentable research are supposed to be withheld from publication. If you are considering patenting your research, you should temporarily withhold publication of your thesis, including the title and abstract. This is because even limited visibility of your thesis in your university’s repository will be considered public disclosure for patenting purposes, affecting your ability to secure a patent or reducing the scope of patent protection. Note that conference presentations and proceedings are also considered public disclosure.
Patent offices conduct a patentability check and a priority date check to ensure that there has been no significant public disclosure (e.g., publications, presentations, reports). A patent may be rejected if it was disclosed to the public before a patent is filed.
If you find yourself in a patent versus publish dilemma, here’s how you should go about it: get in touch with the relevant office or department at your institute and inform them about the situation. You may need to fill an “invention disclosure” form and put in a formal request that your thesis be withheld from publication to prevent premature disclosure of potentially patentable subject matter. Accordingly, there might be a “delayed release” or embargo option, where the reason for the delay is given as “patent pending.”
Filing a patent application
Standard steps to file a patent are as follows:
Secure an idea > verify if the idea is patentable (perform a prior art search) > secure a patent type and write a summary document (describing prior art, invention specifications, figures, experimental data, references, and claims) and specification document > send all relevant forms and documents to the patent office.
An inventor may submit their patent application in a formal document to a patent office of a specific country (e.g., United States Patent and Trademark Office [USPTO] in USA, the Office of the Controller General of Patents, Designs & Trade Marks [CGPDTM] in India, the China National Intellectual Property Administration in China) or to the World Intellectual Property Organization (WIPO) for international applications. National patent offices only grant patents for their country. You may even seek patent protection in different countries.
Strategies to balance patent filing and thesis writing
Carefully time your patent application(s)
Plan ahead and budget time for patent applications. Try and file the application(s) well in advance to avoid delaying the publication of your papers and thesis and missing presenting your work at important conferences.
Use provisional patent applications
In the interest of saving time and yet establishing priority, you may file a provisional application. Such an application secures a priority date, circumventing the complexity and cost of a standard application. After a certain period (typically, 1 year), you may file a standard patent application, while reserving the priority date of the provisional application.
Consider your institute’s embargo periods for theses
Check your institute’s thesis withholding process for patentable research. Request a formal embargo or “delayed release” to prevent premature disclosure. Be aware that even limited visibility in university repositories can affect patent rights.
Follow best practices
To avoid unnecessary delays and pitfalls during patenting and publication, know and understand what is patentable; maintain all your records, raw data, lab notebooks, etc., diligently; and communicate openly with supervisors and collaborators to clarify aspects such as conflicts of interest and sharing benefits with your institution.
Stay informed and updated using relevant resources
Explore resources such as patent databases and search tools, online guides, and massive open online course (MOOCs) to familiarize yourself with intellectual property rights (e.g., Intellectual Property Law and Policy and Patenting in Biotechnology). If in doubt, contact the staff at your institute’s technology transfer office (or equivalent).
Conclusion
In academic research, patent protection and thesis publication require careful planning and strategic decision-making. Researchers must balance the need to protect potentially valuable intellectual property through patents, while contributing to scientific knowledge through publications. By understanding patent criteria, timing patent applications carefully, and adhering to university embargo policies, researchers can effectively safeguard their innovations while fulfilling their academic obligations, thereby maximizing both the commercial potential and scholarly impact of their work.
Academic success is a holistic picture of your scholarly impact on society and industry, including how your research output is put to use. It’s not just the publications that count. If applying for a patent means a delay in your paper or thesis being published, it might well be worth the wait!
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