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I'm in a peculiar situation, which I'll try to describe as concisely as possible.

Around three years ago I worked on something and I published a preliminary conference paper, which described the idea in great detail. I'm currently working on a PhD that's about this topic I published 3 years ago. Today I found out that there exists a patent that was accepted last year and it's like 50% about the same idea I published in that conference paper. Not 100%, it has some unique stuff in it and I'm pretty sure they didn't try to steal my idea, they probably came up with it on their own, that's why it has some additional features that I don't even need. But it's similar. I still haven't finished my PhD, but I'm worried—can this patent be a problem for me? I can prove with that conference paper that I was working on this idea years before the patent was submitted and published.

What would be the best course here? I was thinking of citing this patent in my PhD, but if nobody said anything about it until now, I'm worried I just might start opening too many questions.

Any kind of ideas are greatly appreciated. I'm really, really worried that my PhD thesis can become invalid because of this patent. Is that possible?

  • I feel like more information about how your work and the patent relate would be helpful, as well as the field. Is this a "I invented an algorithm and someone else patented a functionally equivalent algorithm"? Is this a "I had a physics idea and someone has patented a device that uses that idea"? – Stella Biderman Apr 13 '18 at 21:42
  • @Stella Biderman: I don't want to go into too much detail, for "security" reasons, but it's definitely the latter, although I later set up a similar "device" which overlaps with the one that was patented in about 50% or less. Although I was the first with the idea, the article proves that. – WorriedAF Apr 13 '18 at 21:48
  • How, exactly, is this patent creating problems for you, again? You established the original idea with your conference paper and you're not the one trying to make money on that idea, right? – Mad Jack Apr 13 '18 at 22:47
  • my PhD cite and use ideas from patents, I dont understand why is this an issue? you are aware that publishing and having a patent is different? – SSimon Apr 14 '18 at 14:49
  • academia.stackexchange.com/users/41198/ssimon it's one thing to cite a patent and another to develop a similar device – WorriedAF Apr 18 '18 at 13:34
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You are right to be worried about a patent in the same field as your thesis research.

You do have some protection in the form of having "prior publication" that shows your work predates the thesis. But this is not necessarily sufficient to protect your future work.

I would get into immediate contact with your thesis advisor, as well as the legal department of your university. They are trained in handling such issues, and can advise you as how best to proceed so as to protect yourself.

Note that the goal of talking to the legal department is not to file a lawsuit. The goal is to understand what are your rights as a researcher working in an area with an existing patent, and how you can show that you are avoiding infringement.

  • The patent I'm talking about was posted by a large firm so I don't think anyone wants to involve lawyers here, especially not my department. I've talked to my mentor and he didn't seemed that concerned, considering the published articles I have in this field. I'm not exactly sure what you mean with "But this is not necessarily sufficient to protect your future work."? – WorriedAF Apr 13 '18 at 21:48
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    It is public knowledge, with you having an early publication and them a filed patent (publicly visible), so I estimate it will not block off your publications (you need to cite them, though) and will become only a challenge when trying to commercialise. You can try to file for prior art if you are commercially interested - not fun, but that's how it is. – Captain Emacs Apr 14 '18 at 9:27
  • @WorriedAF See my edit above. You want to talk to a lawyer to know your rights, not file a lawsuit. – aeismail Apr 14 '18 at 11:49
  • But this is not necessarily sufficient to protect your future work. -- If OP does not want to patent anything, I don't see how this even affects future work. – Mad Jack Apr 14 '18 at 12:35
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There is no reason to fear that your PhD thesis will be invalidated. It is entirely possible for independent work to happen simultaneously, and so long as your work is technically sound, the thesis and defence should not be affected.

However, looking ahead, if you want to further develop your device (assuming it is a device for simplicity), you may run into difficulties. If you are looking to monetise it somehow, you will certainly have a conflict with the patent and legal advice will be necessary. I believe this is what @aeismail meant with regard to future work.

While this may not be an immediate concern to you, I think the department would do well to look into it and protect it's IP if the idea has potential for further development, not necessarily commercial development alone. So while your PhD seems safe, you may still like to pursue these options because you may not want your work to be appropriated by someone else at a later stage.

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