CANADA / PATENTS / ACADEMIC RESEARCH

Canadian Intellectual Property Review, Vol 16 No 2, April 2000

To Publish or to Patent, That is the Question

T Andrew Currier

In this article, the author points out the enormous pressures on academics to publish the results of their research. Publication can be critical in terms of tenure, salary, research grants and academic reputation. Yet publication can have its dangers. One of these is the risk of plagiarism, from which many academics seek to defend their work by filing their research as "working papers", which may be deposited in the university library. This in turn has its risks, since a working paper submitted to a university library or to the National Library of Canada (or both) may amount to publication of the working paper; and this can affect the patentability of any invention which the working paper directly or indirectly discusses. The author refers briefly to the basic requirements of Canadian patent law and in particular to the "grace period" of one year from publication to filing afforded to inventors in Canada and the United States. He goes on to suggest how a strategy of publication may be reconciled with a strategy for patenting. It may be possible, he says, to construct a confidential deposit of a working paper: this can help an academic preserve his or her patent rights, while simultaneously establishing a date of authorship for future publication of the research. It may also be possible to have the research published in a journal, provided that great care is taken to coordinate the date of filing and the date of publication: the help of a patent attorney may well be desirable, since filing may take longer to prepare than expected. Finally, it may be possible, again on the advice of a patent attorney, to file a provisional patent application. Nevertheless, the answer to the problem may well lie in legislative protection for university research from public disclosure, as in some states in the USA and in the Province of Quebec, though the author recognises the resulting conflict between academic confidentiality and the public right to know. He concludes that "academics and their universities should consider an entire strategy for the research that includes a patent strategy", which will probably require the help of a patent specialist early in the process. [20024]