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Recently I have a paper acceptance from a tier-1 conference in our field of telecommunication. I have also submitted the extended version in IEEE Transactions as well.

Is it ok (and acceptable) for me to write the patent out these papers? (I understand that paper acceptance does not guarantee patent acceptance)

What will be the academic/career benefits for me to write the patent at this stage when I am writing my thesis?

SJa
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    I do not specialize in patent law and it depends on your legal system, buy you have to make sure that patent office won't treat prior disclosure in the paper as a basis for rejecting the patent. – lukeg Jul 17 '18 at 11:55
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    Prior paper generally automatically nil any patent claim, as the content of the patent is already published. – Greg Jul 17 '18 at 14:48
  • http://www.sciencemag.org/careers/2001/10/patent-first-publish-later-how-not-ruin-your-chances-winning-patent – mikeazo Jul 17 '18 at 14:50
  • Anything already published can count as "prior art" in the patent process. You should therefore apply for patent first to be on the safe side. – mathreadler Jul 17 '18 at 17:43
  • I am not a layer, but from what I've heard, you just lost your chances with EU patent ("prior art"), but still have some chances for US patent. There, you have some kind of a deadline to apply for a patent after the publication. Check with your local university patent application office. – Oleg Lobachev Jul 17 '18 at 18:44
  • If this work was done for your thesis, this may be something to bring up with your university. Many universities own the results of research their students perform in the course of the students' studies, so any patentable IP deriving from your work would have to be handled by the university. – asgallant Jul 17 '18 at 19:45
  • There is an ask patents stack exchange. We'd be happy to answer any questions about disclosures and how they impede your possibilities to obtain a patent. – DonQuiKong Jul 17 '18 at 20:12

3 Answers3

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Any information which you disclosed in your publication will count as prior art, and cannot be patented by you or by anyone else. If you wish to write publications about an invention which you also wish to patent, you must file for patents first. Hence, a paper cannot be "transformed" into a patent. If you have an invention which builds upon the information disclosed in the paper, this may be patentable.

Patents cost money to file, and expensive to maintain. There is also considerable skill in writing patents. There is no point in filing for a patent unless you intend to exploit it. As such, the academic/career benefits do not justify filing for a patent per se, and without a good plan to commercialise the invention, it will simply be a waste of money.

MJeffryes
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    This is oversimplified, at least for the US patent system, which allows for a patent to be filed up to 12 months after initial disclosure of the invention. – mbrig Jul 17 '18 at 14:52
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    Also note that it is "inventions" that can be patented, not ideas. If you publish something (ideas) that would let an ordinary practitioner (careful with the definition here) infer an invention in a straightforward manner, it would be prior art. But ideas in general are not. Ideas themselves can neither be patented nor copyrighted. For patent law it is "inventions". For copyright it is "words" (and similar). – Buffy Jul 17 '18 at 15:28
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    At least in the U.S., I would also note that, in addition to costing money to file and maintain, patents take a long time to issue. I still have patents pending that I filed about 3.5 years ago. The patent issuance process here seems to be a test of your patience and determination (and pocketbook) more than anything else. Basically, the patent office sends a rejection letter, you send a response explaining in detail why everything in the rejection is wrong, cycle repeats until one of you gives up. – reirab Jul 17 '18 at 18:02
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    @reirab That's not unique to the U.S. Czech republic here and we just decided to let out pending patent lapse since it was over 7 years old and still not finished (patenting that is. We finished and sold fair amount of the products). In the time the invention (IT based) wasn't really worth the extra money it would cost to finish the process, we did though get protection during the pat. pending phase which we never actually needed to use.:) – DRF Jul 17 '18 at 18:19
  • @DRF Yeah, I figured it probably wasn't unique to the U.S., but didn't want to overgeneralize beyond where I have experience. :) I can't say I'm surprised that it's not better in Europe, though. – reirab Jul 17 '18 at 18:44
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    There is no point in filing for a patent unless you intend to exploit it I disagree. Defensively filing a patent you have no intent to enforce prevents someone else from filing a patent on the same invention that they will enforce. First-to-file patent systems mean you can be screwed over by someone else who is quicker to file than you are, even if you are the first to invent. – asgallant Jul 17 '18 at 19:26
  • @asgallant in this case, OP has already published the potential invention, so prior art has been conclusively established. – MJeffryes Jul 17 '18 at 19:28
  • @asgallant more generally, defensive patenting is something that companies concern themselves with, not individual academics. It doesn’t make any financial sense for an individual. – MJeffryes Jul 17 '18 at 19:33
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    @MJeffryes that assumes that the paper is sufficient to qualify as prior art, or if it serves as the basis from which someone could develop a patentable invention. If the only benefit the OP intends to get from the patent is academic gains, then its not worth doing, but a patent would prevent a 3rd party from exploiting the OP's work in the event that the paper is not sufficient prior art. – asgallant Jul 17 '18 at 19:38
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    @MJeffryes may be true but patent trolls could file for things they understand others may want to use but which they have no intent of trying to make products from but still try to sue anyone using it. – mathreadler Jul 17 '18 at 21:56
  • @asgallant: A Donald Duck magazine has counted as prior art (concerning the raising of sunken ships by filling the hull with ping pong balls). The standard for academic papers is far higher, and in particular the norm of reproducability means that any decent paper would serve as prior art. Furthermore, published papers are by definition published prior art. – MSalters Jul 18 '18 at 07:09
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Patent law varies from place to place, of course, but generally relies on priority in time. I don't see any academic objection to filing a patent, but it can be expensive. Perhaps you need to consult a patent attorney (also expensive).

On the other hand, your work may be solid enough to establish 'prior art' if anyone should try to beat you to a patent. But in actual practice, there are anomalies.

The comment of user MJeffryes implies that the struck comment is probably incorrect. Wikipedia has a discussion of prior art.

Note that I prefer conservative (i.e. safe) solutions. If I'm wrong in this answer, I apologize, but will leave it in place as a bit of a warning (aka Humble Pie). I stand by the statement that there is no Academic objection, but the OP needs to behave in an optimal way, and not depend on possibly wishful thinking answers (mine). See the answer of MJeffryes for better advice.

Buffy
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  • Some universities may have official help for filing patents based on your work there. (As Buffy said, it can be expensive.) And then, the university may graciously assign to you a portion of any future income from the patent. – GEdgar Jul 17 '18 at 12:30
  • @GEdgar Hmmm. You are correct, of course, if a bit opaque. Yes, the institution may "help" you in exchange for most of the patent rights. This is typical in some companies, by the way. They can require, as a condition of employment, that they "own" your work. Especially if it is revenue generating. If you don't have an agreement in place, make sure you understand anything that is offered. Professors may already be covered by "agreements", but it isn't as likely that students are. You may have negotiating room. – Buffy Jul 17 '18 at 12:43
  • On the other hand, your work may be solid enough to establish 'prior art' if anyone should try to beat you to a patent This is wrong. The paper itself is prior art, and will prevent anyone, including the author of the paper, from filing for a patent. – MJeffryes Jul 17 '18 at 13:04
  • @MJeffryes That surprises me. I have no reason to doubt you, but would want legal advice. Here is wikipedia's take. https://en.wikipedia.org/wiki/Prior_art – Buffy Jul 17 '18 at 13:45
  • @Buffy It makes sense. It would be kind of ridiculous if the system allowed you to publicly publish something in a way that readers would reasonably assume allows them to make use of the information and then later file a patent on it and sue them for infringement. – reirab Jul 17 '18 at 18:48
  • @reirab If only it were that simple! Many things in the literature, if used commercially, would infringe someone’s patent. Academic use is usually exempted from patent law, which is why this is rarely an issue for academics. – MJeffryes Jul 17 '18 at 19:12
  • @MJeffryes, now I'm totally confused. The literature doesn't affect patent. Only inventions can be patented. In fact, patents are public and intended to expire so that knowledge is "recaptured" in the public domain. You can talk/write about the internal structure of anything patented (e.g. the Keurig). That isn't infringement, by academics or others. Just don't try to build one, or incorporate those essential (novel) elements in another "invention." – Buffy Jul 17 '18 at 19:17
  • @Buffy Yes, basically. The point is that generally academics don't check whether something they publish has already been patented, and nor do journals. Frankly it would be a very difficult task, and would require employing patent lawyers. So if you decide to exploit something you read in a journal commercially, it's your responsibility to check whether it's patented or not. – MJeffryes Jul 17 '18 at 19:23
  • @MJeffryes I was referring to the problem of if it were not patented when you published the paper, but then you were allowed to patent it substantially later. This would mean that people could have read about it in your paper and even performed a thorough patent search before selling a product using your idea in good faith, but still end up infringing when you later file the patent. That would be kind of ridiculous. – reirab Jul 17 '18 at 19:33
  • @reirab These ridiculous situations can still happen. Patent law is a nightmare, and even if you do everything right, someone can still claim you’re infringing. – MJeffryes Jul 17 '18 at 19:34
  • @MJeffryes I'm not disagreeing with you on that point. Patent law (and the application thereof) is frequently ridiculous. I was just explaining why your first comment to Buffy is correct (i.e. why publishing your idea in an academic journal can be considered prior art.) – reirab Jul 17 '18 at 19:37
  • I'm getting more and more confused. Aside from the abomination of software patents, noting you "read" in a journal or elsewhere is patented. Only inventions are patented. Words can be copyrighted, but that is a different thing altogether, with its own problems. You have to "create something novel" to patent it. Up until recently that meant a physical thing. You can describe an invention without infringing. You just can't replicate. Am I missing something or are you? I'm worried that some here are confusing copyright with patent. – Buffy Jul 17 '18 at 19:39
  • @Buffy Sorry, what I mean is, a paper can describe an invention which, if used, would infringe on a patent. My point was simply that the fact that something is published doesn't mean you can be sure that doing what the paper describes won't get you sued by someone for patent infringement. – MJeffryes Jul 17 '18 at 20:36
  • @MJeffryes, ah. yes. Now we are on the same page. – Buffy Jul 17 '18 at 20:47
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tl;dr: It's unacceptable; don't file a patent.

In my view of academic ethics, the filing of patents is immoral. It calls on states' coercive power to prevent the use and further development of technology. The justification of helping individual inventors to support themselves financially should be rejected, for multiple reasons (see bottom link) - the damages far outweight the benefits; the main owners of patents are large corporations; and the very mechanism of enforcement is highly problematic.

Consider gowing through this overview of some of the criticism of and objections to patents on Wikipedia.

In this particular case, you seem to want to try to take knowledge and know-how that has already been made publicly available and usable, and tie it up with a patent protection. Frankly, that sounds like an insidious idea, and many people may come to resent you if you succeed, or even if they realize you've tried doing so. The very knowledge that the taint of IP registration, patenting in particular, may be in touch with some piece of research is enough to drive many potential adopters away from it.

So just say no to tem-patent-ation...

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