Australia: Patenting inventions emerging from academia – 5 common mistakes

Last Updated: 6 April 2018
Article by Michael Zammit and Grant Shoebridge

Are you an academic? Have you sought patent protection of your inventions, or do you plan to? What should you think about before you publish your work to preserve and maximize your patent position? Are you inadvertently making one or more common patenting mistakes?

Over the past dozen or so years I have assisted Applicants from a broad range of businesses protect their intellectual property (IP) – in particular, by patenting the technology they have invented. These businesses have ranged from small start-ups, to large multinationals, and everything in between. In addition, I have worked with the technology transfer and IP offices of several prominent Australian universities to protect the IP developed by academic staff and students.

The purpose of this article is to cover some of the more common situations that may jeopardize the ability to seek patent protection for an invention, or to limit the scope of what can ultimately be claimed. I have personally seen inventors make several of these patenting errors over the years and thought it may be useful to share some of the more common mistakes in this article.

Publishing before patenting

Academics are under pressure to publish their work to promote their expertise in their chosen field and to obtain further funding for their research. However, the pressure to undertake cutting edge research and quickly publish that research can jeopardize the prospects of obtaining protection for the invention(s) that result from that research – which is unfortunate when it later transpires that those inventions are potentially very commercially valuable.

Once an "enabling disclosure" of an invention is made to at least one member of the public who is not under any duty of confidentiality (such as a non-disclosure agreement), there is no longer the possibility of patent protection for that invention as the invention is considered "published". Once published, the invention is not "novel". An enabling disclosure is one that conveys all the technical features of the invention to a skilled person to enable them to make the invention. This could be by way of a conference abstract, a journal article, a letter to the editor, a poster, a website, email, public forums, Facebook, LinkedIn, possibly working the invention in public, or even an oral presentation.

Whilst there are some jurisdictions which provide a "grace period" for such disclosures (meaning that the disclosure will be ignored if patent protection is sought within a certain time period) it is generally unwise to rely on these provisions as a matter of course. Also, not all jurisdictions provide a grace period, e.g., Europe, and different rules apply in the jurisdictions which do provide them.

I have personally witnessed an academic discuss their latest invention at the end of a public presentation and discuss their latest results which were "hot off the press". This disclosure occurred before disclosing the new invention to the University's IP Office, and was a potential publication of the invention. I have also been involved in a case where the inventors confirmed in the Record of Invention (ROI) that there had been no earlier publication of the invention the subject of a patent application. Unfortunately, however, during the examination and search phase of the patent application the Examiner uncovered the abstract of a poster presentation 18 months before the filing date of the patent application, rendering the claims not novel. The ROI was clear that a poster presentation constituted a disclosure, but apparently the inventors did not read the ROI carefully enough, or think a poster presentation counted as a publication, or perhaps forgot about it when completing the ROI form.

Prior art searching

It may sound obvious to say, but it is beneficial to search the literature before embarking on new research. Searching can ensure that time, money, and resources are not wasted on pursuing avenues of investigation that have already been explored and found to be of little value, and future research can be better focused on what may deliver new and useful results. A good illustration of this is a case in which a large multinational had engaged an Australian University to undertake research over many years to develop a novel apparatus, including prototyping the apparatus and computer simulations of how the device worked in practice. Many thousands of hours were devoted to the project, including many honours projects. I was involved in drafting a portfolio of patent applications (under instruction from that multinational) over several years protecting the apparatus itself, the method of using it, and various improvements too. Unfortunately, after dozens of patent applications had been filed in the countries of interest, it was brought to the Applicant's attention by one of its suppliers that the apparatus had been published some 15 years earlier in a German patent publication. That single publication deprived almost all the patent claims from having any novelty, resulting in the Applicant abandoning the entire family of patents worldwide.

Needless to say, this was an unfortunate situation, with years of time wasted and probably hundreds of thousands of dollars, too. The reason why the German patent was not found earlier in the project was never investigated thoroughly, but it was suspected at the time that very little prior art searching was conducted by the University or the multinational, and if it was, it was doubtful that a professional searcher had undertaken the searching.

Admittedly, this is rather an extreme example, but it illustrates what can happen if the literature is not thoroughly investigated prior to commencing work, and what can happen if the patent literature is not searched. It is likely a professional searcher would have found the German patent, due to its classification in the relevant International Patent Classification (IPC) code. For completeness, we were instructed not to undertake any literature searching.

Of course, not every publication can be assessed prior to commencing the research, but comprehensive searching is a must, and the patent literature should also be searched, preferably by a professional patent searcher.

Insufficient enablement

I regularly receive and review ROIs from various universities. These ROIs are authored by the inventors and are the first step in capturing the invention and communicating them to the university to assess their commercial value. They are also used to communicate the invention to an attorney who will draft the patent application if the university decides to proceed. Most often the ROIs are well written, and the inventors have a good grasp on the relevant prior art. Sometimes the inventors even understand the path to commercialisation, and have commercial partners lined up, too.

One issue, however, can be the amount of experimental data which is supplied with the ROI, and which is generated over the ensuing 12 months before the "complete" patent application needs to be filed (usually by way of an International Patent Co-operation Treaty (PCT) Application). Often, researchers discover something new and have sufficient experimental data to demonstrate that new effect with certainty and to justify a journal publication. Sometimes, additional experiments are also undertaken to explore the full scope of the invention, but not always. Why can this be an issue?

The answer to this question can be found in understanding the law of "enablement". In brief, the patent specification must provide sufficient information to enable the whole width of the claimed invention to be performed by the "skilled person" without undue burden, or the need for further invention. How much enablement is required strongly depends on the particular field of technology, and the relative skill set of the skilled person. A single example of the invention may satisfy these requirements. However, what is more likely (especially for broad claims) is that several alternative embodiments are required. The requirements can be even higher under some circumstances, for example where the claims are directed to synergistic combinations, or to alloys.

Whilst it is understandable that the once the new effect is discovered researchers want to quickly move onto their next research project, it is important to ensure that sufficient experimental data is generated and disclosed in the patent application to support the full width of the intended claim scope. Therefore, at around the time the provisional application is filed, it is preferable to map out a research programme with the attorney who is drafting the patent application to identify any additional research that should be conducted over the ensuing 12 months to make sure that sufficient supporting data is available by the time the PCT application is due to be filed. Providing that additional data can make prosecution of the patent application more straightforward, but more importantly can increase the prospects of broad claims being granted, increasing the overall value of the patent.

Publishing improvements after filing a provisional application

Every once in a while, inventors develop or discover some revolutionary new material (or method) that provides a step change in performance over and above the prior art, and then go about exploring that new material to optimize it and refine its properties even further. Some new, peripheral uses, are sometimes also discovered along the way. Whilst the initial discovery is usually protected by one or more patents, often those incremental advances are forgotten. However, the first patent filed is not necessarily the one that is required to protect the eventual product that goes to market, and therefore protection of those incremental improvements can also be critical.

As product improvements may not be covered by earlier applications, it is important for any improvements or developments to be discussed with the attorney handling the IP before they are published to ascertain whether a supplementary application may be required. By filing patents on those improvements, the life of the initial patent is effectively prolonged, and competitors are prevented from developing those improvements and protecting them. A suite of patents over the new material (or method) and the improvements is more commercially valuable and is a far more licensable proposition.

Statements affecting the patentability of a future invention

Most of the legal tests that have developed around the world to determine whether an invention is obvious in view of the prior art are centered around asking whether it would have been a "matter of routine" to proceed to the claimed invention with some "expectation of success". An invention can therefore be found to be obvious in view of the prior art if there is some suggestion or motivation in the prior art that would have led a skilled person to arrive at the claimed invention with that expectation of success.

To avoid any negative consequences on patentability for a future invention, it is preferable for publications to avoid suggesting that some future research is expected to result in some improved result or outcome. For example, I have seen cases of academic publications reporting on some current research and then foreshadowing the details of future research and alluding to the expectation that the future research will result in even better results than the current research being reported. This practice might be aimed at securing future research funding or might be "claiming ownership" of that future research in an attempt to discourage competitor research groups from exploring that field. However, the problem that arises is that it can affect the patentability of a later-filed patent to an invention that emerges from that future research. For example, it is easy to see how a patent examiner could be examining a patent directed to that future invention and conclude that the claimed invention was obvious in light of the earlier publication which suggests the claimed invention was the "obvious" or "logical" next step in the line of research (i.e., a matter of routine) and success was entirely expected. This would lead the examiner to find the "future invention" not patentable.

Academics may not always have these considerations in mind when drafting manuscripts for journal publications. Therefore, it is preferable not to step beyond reporting the actual results obtained in the current research. Additionally, it is not just what is published before filing a patent application that is relevant: what is published after filing can be relevant, too. For example, stating in a later publication that the development of an invention was obvious, simple, straightforward, or routine, could be used as evidence during prosecution of that patent or in a revocation proceeding that the claimed invention was obvious at the time.

On a somewhat related point, it is important to carefully decide the scope of the patent specification, too. Including information on embodiments that are quite different to the claimed invention will create prior art for that combination and may deprive it from being able to be protected by a patent. In other words, such additional subject matter is effectively given away.

Finally, publishing the research after filing a provisional application is not recommended, as improvements included in the complete/PCT application could be found to be obvious in light of the academic publication. This is especially the case in Europe where the invention must be "directly and unambiguously derivable" from the provisional application. This is an important point to note, and is an area of some confusion, as patent applicants have often been told by patent attorneys that they are free to publish after the provisional application is filed.

Closing comments

Some common mistakes include not considering patenting of the invention before publication, not searching the prior art (including the patent literature), publishing improvements without considering IP protection of those improvements, and making statements in a publication which step beyond the actual results obtained can be detrimental to future patentability of the invention. Preferably the advice of a patent attorney should be sought.

The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

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Michael Zammit
Grant Shoebridge
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