Any new patent applications filed in the UK within a year of the filing date of an original patent application for the same invention are entitled to claim the filing date of the original application. After the first year it is no longer possible to claim priority, and any publication of the invention during that year could be used to challenge the validity of any subsequent application filed outside of the first year. This is important in case it becomes necessary for the original application to be abandoned in favour of a new application with a new filing date.
In completing the Invention Record you will be providing to us important information to help the patent attorney draft the application. In preparing a patent application the attorney is required to draft a specification which describes the invention in detail and highlights those features of the invention which are new and inventive over what is already known. At least one way for the invention to be put into effect should be included in the specification.
You will be encouraged to speculate as to the possible uses of your work to a level beyond that in an academic publication. The application itself will be published 18 months after filing. It is possible to describe more than one related invention in a single patent application. In due course, however, the inventions will need to be divided out into separate applications, as a patent is only granted on a single invention.
Oxford University Innovation and its patent attorneys are able to advise. It is essential to identify accurately the people who made the invention s described in the patent application. Inventorship is a matter of fact, not opinion. It is unusual for an invention to be made by more than two or three people. Whilst those associated with research may be included as authors on academic publications, only true inventors may be included on patent applications. If inventorship is recorded wrongly, this may be enough for the patent authorities to refuse grant of or revoke a patent.
Oxford University Innovation and its patent attorneys are able to assist in discussions to establish correct inventorship. Patent applications and granted patents are published by patent offices around the world and are publicly available documents.
Published patents provide a wealth of information which researchers may wish to access for a number of reasons:. Patent applications are published 18 months after they are filed this now includes US patent applications. Other "grace period" countries are Japan only six months and then only if the patent office is notified of the publication at the time of the patent filing , and Canada.
A grace period merely removes your own publications from the stock of all literature, which comprises the prior art. It gives you no immunity from the effects of other people's publications or patent applications.
Note that for all other countries except for the grace period countries of the USA, Japan and Canada, the patent application must precede any publication of the invention if only by a day or the patent may be ruled invalid. However, once a US patent application has been filed and this filing has preceded any publication of the invention, the inventor has an additional one-year period to file any additional foreign patents.
The importance of keeping innovation and research results confidential may not be obvious to new researchers, who have had limited exposure to the potential value of a patent. It is important that the principle investigator or the senior faculty member take a moment and explain the need for confidentiality to any new researcher, especially if that research may result in valuable intellectual property.
To insure that the patent application rights are maintained, the person with whom you intend to discuss your invention must know in advance that your disclosure is meant to be kept confidential.
Although confidentiality can be inferred from the circumstances of the disclosure, it is usually much safer to record your mutual rights and obligations through a Confidential Disclosure Agreement, also known as Confidentiality Agreement or Non-Disclosure Agreement, signed in advance by the person who is to receive the confidential information. It is important to be selective in determining with whom you choose to make your confidential disclosure. Although there are legal provisions for protecting your rights if your invention is disclosed against your will, those provisions carry time limits counting from the wrongful disclosure and are not a complete safeguard once the information becomes generally available.
Also, it is strongly advised that you not make any disclosure, including even a confidential disclosure, to a potential customer or licensee for the invention until the patent application is filed. The Office of Research can assist you with the preparation of the appropriate agreements to protect your patent rights.
Before publishing the results of any research, the author needs to ask whether the document or disclosure contains any innovation or discovery that could be patented. As explained in this memo, all foreign patent rights are lost and a one-year time limit is established for any US patent rights upon publication. If there is any question or doubt as to the patentability of a new innovation, the researcher is encouraged to complete an Invention Disclosure form, contact the Technology Transfer Office.
The purpose of this memo is to help you understand how a premature publication can undermine the validity of a patent. This note does not contain definitive legal advice and should not be used as a substitute for the advice of your lawyer or patent attorney. For additional information or for answers to specific questions, please call the Technology Transfer Office. Main Menu. For instance, after filing a US patent application, inventors enjoy a grace period of one year post the public disclosure of the invention.
However, counting on that grace period is still not a good option. Once the invention becomes public, competitors may find ways to improve the invention and file a patent based on those improvements! Therefore, scientists must ensure they file a patent application first and then publish it in an academic journal.
A public disclosure does not necessarily mean a scientific presentation at a conference or an official demonstration at a tradeshow. It could also be by way of a conference abstract, a letter to the editor, a journal article, via emails, public forums, or a poster. Once something is made public discussed, presented, or published it is considered state of the art and is no longer novel. Therefore, it cannot be protected or patented. Before discussing your findings with anyone, remember to discuss with your supervisor if the research has the ability to result in intellectual property.
If you decide to publish a paper associated with your patent, it is advisable to inform the same to the journal editor as a pre-submission query. The journal editor may inform you about any rules related to the publication of patent-related content. Furthermore, get your scientific paper reviewed by the IP office or a patent counselor before submitting it to a journal.
To succeed in the scientific arena, it is crucial for a researcher to continue presenting at conferences, publish papers, and win grants. So how do you achieve the best of both worlds? For a win-win situation, all you need is a little planning, self-discipline, forethought, and vigilance. Have you ever tried publishing information related to a patent?
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