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Scientist dilemma: publish or protect?

Patent vs. Publication

The situation in other European countries might be different, but let's presume, the principles remain more or less similar to the eastern Europe.

The issue to explore - is how informed are the scientists about possibilities of disclosing and protecting their discoveries. Unfortunately, too often we face the fact, that scientists lack comprehensive information, how they could achieve most with their inventive work and achieve maximum in both battlefields: scientific and commercial.

Even though a scientist has no intention to do any commerce, however there are many technically minded entrepreneurs,who would gladly take the research results and turn it into profit. For successful transfer of ideas, patents serve well, thus every scientist should remember: first patent, then publish.

Scientific publications and patents have one thing in common for sure. The subject disclosed therein must be novel at least to some extent. Differences lay mostly in the nature of the discovery. Some scientific discoveries could not be patented, while some technical solutions would rather not be recognized as valuable by respected journals.

But in case the discovery meets requirements for both – the patent and the scientific publication, it is recommendation is to apply for both. There are just few simple details that have to be kept in mind.
First – patent, then publication

The most important rule is related to the sequence of actions. Patent applications, until they get published have to pass examination steps, which in overall take at least 18 months, unless an earlier publication is requested. With respect to scientific articles, they are published if not immediately, then mostly within 1-2 months. It is evident that patent should go first and only then the subject should be sent to journals, red on conferences or published in poster sessions.

Patent doesn’t count

There is one major objective reason for quite low patenting rate among the academia (at least in Lithuania). Scientists receive special points – for publications in journals – less point for a local journal, much more – for the prestigious, like Nature, Physics Letters, etc. These points are important if one seeks a carrier in science, e.g. it adds scores when applying for Master, PhD as well as for academic degrees (professor, associate, etc.). Also it has some influence in funding i.e. grants – the more scientific articles are published in prestigious journals, the easier it is to get funded.

Patents are often neglected in that sense… Scientists do not get any points for patent applications, therefore it is left for their own self-esteem to be- or not to be called an Inventor.

However it is changing now. Recently some grant rules were changed and now it is said that the project has more chances to be selected if the scientific group would file a patent application in order to protect the ideas discovered. In the end of  2012 we see it working. Many scientists approached us asking to do patent drafting and prosecution. It would be naive to believe that all of those patents will be strong or will have some commercial value. Most of them are as 'formal' as the requirement for patenting. However, the habit, is what's important at the moment.

Scientists are not businessmen

As a rule, scientists do not have business ambitions. Or if they do – they leave universities immediately after they acquire key engineering knowledge to develop products and start production. In such cases, the university is seen as a publicly funded place to develop a product or technology, which might become the axis of a business.

Though some ‘pure’ scientists do patent. For self-esteem or in case they are engaged in some business plan not directly, but through royalties. Although, legally, the inventions, which are made at a university, belong to the university, in reality universities often lack human resources to evaluate the commercial potential of an invention and allow preferential IP transfer to interested business units, license it with business-favourable conditions or simply refuse to take any patenting actions, which automatically turns to possibility for the business unit to patent it by simply agreeing with the inventor on royalty rates.

A Success Story

One of our works was a patent search as well as description and claim drafting for the University of Southampton. We represented a Lithuanian company Altechna R&D (reg. trademark ‘Workshop of Photonics’) to negotiate licensing and IP management conditions as well as to draft patent application. Not only the patenting went well, but also the commercialization process started immediately after patent application was filed. Great synergy was achieved, whereas they – scientists – promoted the technical solution among academic people, like reading papers at conferences, publishing articles in scientific journals. On the other hand – WOP as a commercial partner started active marketing. In less than a month we had 6 serious prospects from well-known companies and laboratories to test our proposed solution. Though one thing is still sad – that was a UK university, not a Lithuanian one.

I am sure, in the future the company will try to lead by this successful example and we’ll manage to change thinking of our countryman scientists! Cooperation gives most…