"There are plenty of stories of researchers who pop into their tech-transfer offices before flying to Europe to deliver a paper," says Robert Cowan, a partner who practices business and technology law with the firm McInnes Cooper, "and then are shocked when they find out they're about to blow any chance they ever had of profiting from their discovery or invention."
Cowan will be on campus Thursday, April 29, as a guest of Three Oaks Innovation for a special lunch–and–learn session entitled “Publish OR Perish vs Publish AND Perish: How to Manage your Academic Responsibilities and your Commercialization Endeavours.”
“University researchers have a responsibility to publish their findings,” says Cowan. “But if their findings are something they could commercialize and profit from, how do they manage that responsibility with the need to protect their intellectual property?”
Cowan says patent rules differ from country to country. In Canada and the United States, the researcher has a year to file a patent after his or her first public disclosure, such as in a published paper.
“But other countries around the world don't give you that year,” explains Cowan. “So by publishing before filing a patent, you give up your rights outside of North America. And that's a significant market for many products — including pharmaceuticals.”
There are ways around the problem. The simplest solution would be to hold off on publication until after the patent is filed.
“But you run into a problem there,” says Cowan. “What if you have graduate students working on your project? They have to defend their theses, and that would count as a public disclosure. You can't stop them from presenting; that would break many universities’ policies of not delaying a student process.”
Cowan says the best bet is to contact your tech-transfer office. They can help navigate the tricky waters of intellectual property protection and commercialization.
“They can help you file something called a provisional patent application, which can be as simple as filing your research paper with the patent office in the US. Then you could publish freely, and retain your rights to a full patent anywhere in the world. It buys you another year, essentially.”
Cowan will have more tips at his lunch-and-learn session. For more information, contact Krista MacDonald at Three Oaks Innovation, Inc.
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