Many people believe that patenting and publishing oppose one another and that one must make a difficult choice between the two. However, the “patent versus publish” dilemma has become an ‘old’ way of thinking. A better description for the situation is “patent, then publish and prosper”.
Patent rights can be of critical importance for the commercial viability of intellectual property. However, patent rights are lost if inventors publish their inventions before a patent application is filed. Intellectual property can be published as research papers in journals; as a poster presentation at conferences, through speeches and talks in public events or through disclosure at any public event.
Inventors should thus rather avoid publishing or disclosing their intellectual property before it is protected either through a patent application or other forms of protection like plant breeder’s rights. In some cases a trade secret is the most appropriate way of protection, and in those instances publication of the key aspects of the trade secret can never be published.
In South Africa, inventors are compelled by Section 5 of the Intellectual Property Rights From Publicly Financed Research and Development Act to disclose inventions made from publicly funded research to their technology transfer office (which in the case of the CSIR would be the R&D Outcomes Office in their Operating Unit of Centre, or alternatively the Licensing & Ventures Office), who has to disclose the invention to the National Intellectual Property Management Office. (The CSIR has an online invention / technology disclosure portal where researchers can submit their disclosures directly.)
It is thus important for researchers to disclose their inventions / technologies timeously, so that their R&D Outcomes Manager (and/or the Licensing & Ventures Office) can advise them appropriately with regards to whether a provisional patent application should be filed, or whether other forms of protection should be sought. The R&D Outcomes manager will ‘screen’ the technology, which at an early development stage of the technology would typically consist of a prior art search and a basic market analysis.
Note that it is possible to file a provisional patent application within a few days (even within one day if really urgent!), and thus there is not necessarily a long delay before one can proceed with publishing. It is however generally good practice to delay publication until the patent application is published by the relevant patent office, so that potential competitors are alerted as late as possible about one’s activities.
There are several further considerations when considering protection of intellectual property, such as:
- If the technology field concerned evolves rapidly, then patenting is not always the best option, since the prosecution processes take very long.
- A new field of R&D is a great breeding ground for patenting because broader protection can be obtained in the early stages, and these usually become quite valuable patents. (On the other hand, uptake and commercial application of new fields sometimes take decades, by which time the core early patents have all expired.)