United States: Turning Your Research Into Something More: Patents Versus Papers

Last Updated: December 18 2014
Article by Christina Sperry and Inna Dahlin

Scientific or technical journal writers like scientists, doctors, engineers, and academics are usually introduced early to the importance and strategy of writing and publishing papers, but patent applications having those same professionals as inventors are usually not so well explained and can be more of a mystery. What is a patent? Clearly, we do not have to go far to find the definition. A quick online search returns numerous pages explaining it to the world. In the U.S., a patent is an intellectual property right granted by the Government to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted. The same basic principles apply in Europe and most other places throughout the world. This definition is familiar to a patent practitioner or any other patent savvy person. But there are a lot of current and future inventors for whom the notion of a patent is not that intuitive.

During the Grace Hopper Celebration of Women in Computing conference that one of the authors, Inna Dahlin, spoke at, a question of differences between a patent and a scientific or technical paper arose. To a patent practitioner, the two documents and their purposes are so different that any comparison can seem superfluous. But the question was asked more than once, which gave pause for thought. There were a large number of attendees (over 8,000) who all were highly accomplished women – undergraduate and graduate students, and more senior professionals from industry and academics. That numerous people who are interested and experienced in technology, and are passionate about research and their careers, had questions about patents versus papers helped shine a spotlight on differences between the two.

Although inventions can be described both in a paper and in an application for a patent, a patent application has particular timing requirements, gives the patent owner particular rights, and often has different goals.

First, throughout the world, with very limited exceptions in only certain countries, a patent application must be filed before any public disclosure of the invention is made or a valid patent can never be secured at all. The subject matter of a paper, on the other hand, can be casually discussed and can be discussed online, at conferences, with friends, or in any number of other public ways without putting the existence of the paper in jeopardy. Thus, consulting with your institution's licensing office or legal staff is often a good first step before discussing any potentially patentable subject matter in any public, non-confidential way.

Second, unlike a paper, a patent is an asset, a property. It is often compared to real estate where claims included in the patent define a scope of what is protected by the patent, similar to a fence around land. That's why the term "patent protection" is used, meaning that a patent protects your rights. The patent can be sold, assigned, and used in a number of other ways to obtain value or competitive advantage in ways that a paper cannot. Whoever owns a patent can sue those violating rights of the patent owner that are expressed in the claims of the patent. A patent (particularly a collection of them, "a patent portfolio") may be worth millions of dollars. Thus, a patent gives its owner certain exclusive rights with respect to the invention, and it is at least potentially more powerful and more valuable monetarily than a paper.

Third, an idea worth patenting should be novel, useful, and non-obvious. After a patent application is filed in the U.S., Europe, or another country, it undergoes an examination process that can last anywhere from two to seven years, and sometimes longer. While experts on a peer-review board can catch that a submitted manuscript pertains to something that has already been done by others, there is no strict requirement that a publication describes something inventive. A patent application, however, is examined to determine whether there is any "prior art", such as prior patents, publications, and other evidence demonstrating that the claimed subject matter has already been publicly disclosed. In other words, a more rigorous standard is applied to patent applications than to manuscripts.

Fourth, there are specific requirements for writing a patent application. Sometimes inventors say that a patent application includes language that they would not naturally use. However, this "legalese" language is often needed to describe the invention completely so it can be implemented by someone else and to set out the scope of the invention in broad, conceptual terms to help define the protection afforded by the patent. Focusing only on minute details that are so dear to researchers and developers could overly limit the patent. Needlessly detailed claims and description may result in a narrow patent protecting only a particular way of implementing the invention so that it is relatively easy for others (e.g., competitors!) to implement the inventive concept in a different way to circumvent the patent. A patent practitioner's job is to ensure that the patent application is as complete and broad as possible and that inventors understand what is being described and claimed. Depending on the nature of the invention, there may also be special requirements for the type and amount of supporting data that should be included in a patent, which may be rather different from the kind of data that should be included in a paper or its online supplements. While the inventor is an expert in the technology, the patent practitioner puts the invention in the proper form.

In summary, while deserved respect and recognition can be earned from technical communities by publishing in a highly regarded journal, being named an inventor opens different horizons and can offer different valuable benefits. Understanding key differences between papers and patents can help make traveling down both these roads easier and more effective for everyone involved.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Inna Dahlin
Similar Articles
Relevancy Powered by MondaqAI
Ward and Smith, P.A.
Ward and Smith, P.A.
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Ward and Smith, P.A.
Ward and Smith, P.A.
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions