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Turning Your Research Into Something More: Patents Versus Papers

Scientific or technical journal writers like scientists, doctors, engineers, and academics are usually introduced early to the importance and strategy of writing and publishing papers, but patent applications having those same professionals as inventors are usually not so well explained and can be more of a mystery.  What is a patent?  Clearly, we do not have to go far to find the definition.  A quick online search returns numerous pages explaining it to the world.  In the U.S., a patent is an intellectual property right granted by the Government to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.  The same basic principles apply in Europe and most other places throughout the world.  This definition is familiar to a patent practitioner or any other patent savvy person.  But there are a lot of current and future inventors for whom the notion of a patent is not that intuitive.

During the Grace Hopper Celebration of Women in Computing conference that one of the authors, Inna Dahlin, spoke at, a question of differences between a patent and a scientific or technical paper arose. To a patent practitioner, the two documents and their purposes are so different that any comparison can seem superfluous.  But the question was asked more than once, which gave pause for thought. There were a large number of attendees (over 8,000) who all were highly accomplished women - undergraduate and graduate students, and more senior professionals from industry and academics.  That numerous people who are interested and experienced in technology, and are passionate about research and their careers, had questions about patents versus papers helped shine a spotlight on differences between the two.

Although inventions can be described both in a paper and in an application for a patent, a patent application has particular timing requirements, gives the patent owner particular rights, and often has different goals.

First, throughout the world, with very limited exceptions in only certain countries, a patent application must be filed before any public disclosure of the invention is made or a valid patent can never be secured at all.  The subject matter of a paper, on the other hand, can be casually discussed and can be discussed online, at conferences, with friends, or in any number of other public ways without putting the existence of the paper in jeopardy.  Thus, consulting with your institution’s licensing office or legal staff is often a good first step before discussing any potentially patentable subject matter in any public, non-confidential way.

Second, unlike a paper, a patent is an asset, a property.  It is often compared to real estate where claims included in the patent define a scope of what is protected by the patent, similar to a fence around land.  That’s why the term “patent protection” is used, meaning that a patent protects your rights.  The patent can be sold, assigned, and used in a number of other ways to obtain value or competitive advantage in ways that a paper cannot.  Whoever owns a patent can sue those violating rights of the patent owner that are expressed in the claims of the patent.  A patent (particularly a collection of them, “a patent portfolio”) may be worth millions of dollars.  Thus, a patent gives its owner certain exclusive rights with respect to the invention, and it is at least potentially more powerful and more valuable monetarily than a paper.

Third, an idea worth patenting should be novel, useful, and non-obvious.  After a patent application is filed in the U.S., Europe, or another country, it undergoes an examination process that can last anywhere from two to seven years, and sometimes longer.  While experts on a peer-review board can catch that a submitted manuscript pertains to something that has already been done by others, there is no strict requirement that a publication describes something inventive.  A patent application, however, is examined to determine whether there is any “prior art”, such as prior patents, publications, and other evidence demonstrating that the claimed subject matter has already been publicly disclosed.   In other words, a more rigorous standard is applied to patent applications than to manuscripts.

Fourth, there are specific requirements for writing a patent application.  Sometimes inventors say that a patent application includes language that they would not naturally use.  However, this “legalese” language is often needed to describe the invention completely so it can be implemented by someone else and to set out the scope of the invention in broad, conceptual terms to help define the protection afforded by the patent.  Focusing only on minute details that are so dear to researchers and developers could overly limit the patent.  Needlessly detailed claims and description may result in a narrow patent protecting only a particular way of implementing the invention so that it is relatively easy for others (e.g., competitors!) to implement the inventive concept in a different way to circumvent the patent.  A patent practitioner’s job is to ensure that the patent application is as complete and broad as possible and that inventors understand what is being described and claimed.  Depending on the nature of the invention, there may also be special requirements for the type and amount of supporting data that should be included in a patent, which may be rather different from the kind of data that should be included in a paper or its online supplements.  While the inventor is an expert in the technology, the patent practitioner puts the invention in the proper form.

In summary, while deserved respect and recognition can be earned from technical communities by publishing in a highly regarded journal, being named an inventor opens different horizons and can offer different valuable benefits.  Understanding key differences between papers and patents can help make traveling down both these roads easier and more effective for everyone involved.

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Christina Sperry is a Mintz patent attorney who drafts and prosecutes patents for clients in the electrical, mechanical, and electro-mechanical fields. She represents companies and academic institutions in the medical technology field and helps protect patent innovations for medical and surgical devices.

Inna Dahlin