How to patent a research paper in India? — PatentGrasp
Before understanding how to patent a research paper, we first need to understand whether a research paper can be patented.
Can you patent a research paper?
The legal treatment on patenting a published vs an unpublished research work is different from each other.
This can be understood by 2 scenarios in order to patent a research paper:
Scenario 1: Unpublished research paper or research work
If your research paper is not yet published, find out if it has patentable content. If it does not have patentable content, you can proceed with publishing it right away without worrying about patenting it. However, if it does have patentable content, you should file a provisional patent application before publishing your research paper. The provisional patent application should be filed before the research is published because that gives you a priority date before it goes in public domain. This also means your legal right on your invention is established that prevents others from exploiting your invention.
After filing the provisional patent application, you can publish the research paper and pursue a non-provisional patent application in the succeeding 1 year. An important caveat here is that your legal right stays maintained only if you file a non-provisional patent application after the provisional patent application. If you do not pursue the non-provisional patent application, the provisional patent application gets abandoned and your right is lost.
Alternately, you can directly file a non-provisional application but it takes more time and effort compared to a provisional patent application. The succeeding 1 year that patent law allows after filing the provisional patent application, really helps inventors gather more details and funds to pursue the non-provisional patent application.
Scenario 2: Published research paper
If the research paper is already published, it can be a potential prior art for your patent application covering the same subject matter. In the patenting world, prior art is any document that covers the features of your invention and thus, prevents the invention from being new or non-obvious. This means that if your research paper was published before you applied for a patent for the same subject matter, it prevents your subject matter (in the patent) from being novel because it becomes the prior art (being in public domain) for your patent application.
To avoid the above situation, you should file a provisional patent application before you publish the research paper or even disclose it to any one else. Once you have filed the provisional patent application, it establishes a priority date for your invention even before your invention goes into public domain. You can now feel free to publish the research paper or disclose your subject matter as long as it is the same subject matter you filed the provisional patent application on. In other words, this means that if any one alleges that it’s their content and if your priority date is earlier than theirs, your priority date proves your precedence.
What to do if you have already disclosed your research or published your research paper?
If you have already disclosed your research work to someone with whom you have a non-disclosure agreement (NDA), they are legally bound not to publish/disclose that content, depending on the terms of the NDA. However, there may be a risk that the recipient of that information may intentionally or unintentionally violate the terms of the NDA, eventually causing your content to leak in to the public domain. The thumb rule to follow here is that you should immediately file a provisional patent application to establish the earliest priority date.
There are very specific (read rare) scenarios, where the Indian Patent Act allows a grace period of 1 year up to which you are allowed to file a patent application after external disclosure. For instance, there is a provision in section 31(d) of the Indian Patent Act that indicates that if you (being the true and first inventor) read the description of your invention before a learned society or the description is published with your consent in the transactions of such a society, you are allowed to file a patent application within 1 year of this disclosure. In this scenario, this external disclosure will not be considered as prior art.
However, the terms ‘transactions’ and ‘learned society’ have not been defined by either the Patent Act or Courts in India yet. A noteworthy point here is that this provision specifically mentions that the disclosure should be in the transactions of the learned society, which can be interpreted as proceedings of that learned society. Therefore, publications in forums and/or on websites (society) may not necessarily include transactions of the society because such publications are accessible by general public and may not necessarily be for the proceedings of such forums. This makes the scope of this section extremely narrow and it may not prove to be your ultimate saviour in scenario 2 unless your external disclosure strictly satisfies the criteria in section 31(d).
Consequently, if you have already published your idea such that it is accessible to general public, it becomes a prior art and prevents you from patenting the same subject matter. Therefore, the only way to apply for a patent is to make additional non-obvious improvements to the idea by adding unique features and then, applying for a patent application.
To digest the above information, here’s a quick visual you can use if you think your research work has patentable content:
Hope the above article was helpful in relating the research paper to the patenting process. Do comment below if you have any queries or thoughts!
Originally published at https://patentgrasp.com on March 28, 2021.
