In the world of medical research there lives a paradox between patenting and publishing, Or so you think?
Some scientists take the view that they can’t patent their research because they will miss out on traditional grant funding. Others however, believe the ‘patent and commercialisation route’ leads to their work never being acknowledged in peer-reviewed journals, leaving a black hole in their CV.
As an ex-researcher, I understand the need for cash flow in the lab. Washing and re-using Falcon tubes is “fun”, said no one ever.
If you’re a scientist in the business of commercialising your research you’re in luck! You have the opportunity to get cash from both traditional funding sources (NHMRC/ARC) and commercialisation (licensing and selling patents).
I’m going to give you the five key things to nail the patent and publish strategy and maximise your cash!
The Five Steps
Step 1: Conferences – Avoid publishing your work in conference posters or abstracts;
This includes anyone from your lab group and/or collaborators. Any publication of your research prior to filing your patent application is counted as a disclosure.
Step 2: All of it – Give your patent attorney all the data, not just that being published;
It is important that your patent application contains all relevant data to ensure you are fully disclosing and supporting your invention.
Step 3: Future Proof – Discuss upcoming experiments with your patent attorney;
Having an understanding of proposed experiments will assist in drafting a high quality patent and devise a patent strategy for your research program.
Step 4: Communicate – Plan the manuscript publishing with your patent attorney;
Keep your patent attorney up to date with publishing progress and deadlines.
Step 5: Green Light – Give the journal an embargo date based on an agreed patent application filing date;
This will ensure your own publication doesn’t form part of the prior art, one of the key criteria of obtaining a patent.
If you follow these five steps with your patent attorney you will be perfectly placed to have your paper published and the patent application drafted simultaneously. As long as the patent application is filed before the paper is published, it won’t count as a disclosure or prior art (Step 5). Then you will be on your way to generating cash through grants and commercialising your cutting-edge research.