I am working on a paper in the field of AI. I've developed a new technology that allows many state of the art benchmarks to be improved on. I want to make sure that when I publish the paper, anyone/company that wants to use the technology can do so free of charge with no strings attached. My fear is that someone will patent the work soon after I publish the paper and prevent this from happening. Should I patent the technology myself before publishing? Is there a better solution?
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21If it's valuable tech, you should talk to the IP office at your institution, or a personal attorney. You should not depend on input from well-meaning internet contributors– Scott SeidmanSep 17, 2019 at 13:50
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13Be careful with the advice given here. Especially in the US. I think the concept of prior art has been weakened recently. The USPTO grants rights to the "First to File" successfully, not necessarily the inventor. If an idea has been exploited previously it counts as prior art (I think, but IANAL). But having the idea may not count for much. As @ScottSeidman suggests, talk to a patent lawyer for correct advice rather than speculation which may be obsolete. Law varies by place and by time. Beware.– BuffySep 17, 2019 at 14:35
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@Buffy - First to File does not mean you can take somebody else's presentation and file on their specific idea (note that it needs to be specific though - extensions to it are just fine!). It just means that establishing just when something was conceived is not needed anymore.– Jon CusterSep 18, 2019 at 17:10
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@JonCuster, ideas, as such, have little protection. You don't patent ideas.– BuffySep 18, 2019 at 17:26
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@Buffy - true, 'idea' was not the correct word. The point still stands on First to File vs prior art though.– Jon CusterSep 18, 2019 at 17:31
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4 Answers
You need not patent your invention. The requirements of a patent are that it is new, useful and non-obvious. To another person your published work is considered prior art. If someone else tried to patent your work the patent office would reject it as anticipated.
Of course this assumes the patent office finds your work. The inventor could fail to disclose it and the patent office could fail to find it in search. In such a case you can typically submit your work to the relavent patent offices to have the patent/patent application invalidated/rejected.
answered Sep 17, 2019 at 13:36
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11The patent office is really bad about issuing invalid patents, so don't be surprised if your publication is not found (especially if published in a small, niche journal). There is now a "post-grant review" process, though, where anyone can file a request to review a recently-issued patent without having to sue the patent holder in court. This is the easiest way to get an improperly-issued patent killed, but you only have 9 months after the patent is issued to do it.– btaSep 17, 2019 at 21:53
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12There is actually a stackexchange where patent examiners ask us, stackexchange experts, if a patent they are currently examining is "obvious" or has prior art. I've submitted prior art myself when one question involves a technology I worked with years ago. Granted not all USPTO examiners use the site but for those that do they need your help. See patents.stackexchange.com Sep 18, 2019 at 9:21
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Here's an example call for prior art - patents.stackexchange.com/questions/5857/… Sep 18, 2019 at 9:23
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1In addition, especially since the OP believes the research will be useful in the field, publicize it. That helps both the basic dissemination of the technique and the likelihood that it will be identified as prior art. Sep 18, 2019 at 10:20
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2@vsz: Laws vary by country, but even if the patent is granted, it still has to be defended against someone who decides to infringe it. Just because a silly patent exists doesn't mean the patent holder will be able to enforce it in court. Sep 18, 2019 at 16:40
In countries I'm familiar with, there is the concept of prior art, and scientific publications are a common form of it. Basically, if you make this information public it would invalidate any patent filed based on it* after time of publication. If someone were to obtain such a patent, it can then be challenged by any competitor. So you should just make your results available, and as clearly described as possible. An arXiv posting may be a good idea to establish priority.
However, the public nature of arXiv isn't necessarily required. At least in the US "circulation at a relevant scientific conference" has been considered prior art in the past. It's less clear to me if a poster would provide sufficient evidence of prior art. You may want to consult a patent lawyer (your university likely has one) about that.
*It and (mostly) only it, that is. If someone were to make a significant invention on top of your results, that can still be patentable. But at that point it's no longer your invention.
I want to make sure that when I publish the paper, anyone/company that wants to use the technology can do so free of charge with no strings attached.
Why not put the code up on a public repository such as GitHub with the appropriate license? This will immediately void the need to patent it yourself, and significantly reduce the risk of someone successfully patenting it.
Regarding the actual patenting concerns, the other answers are good, but I'd like to add that if you do find out that someone has patented your work (such as was the case in this question), you are not alone, assuming that you work with a university. Your work is (partially) owned by the academic institution you developed it under, and they do not take kindly to their proprietary rights being infringed upon (to put it mildly). If you are legitimately concerned about your work being patented (or already encounter it as a patent somewhere), let your university handle it. They have lawyers that specialize in this, and they will make absolutely sure that the violators will have an unpleasant time.
Should I patent the technology myself before publishing?
If you do, then you'll need to involve your university (assuming that your work is part of a thesis/you are a faculty member). They will be very reluctant to have you make any part of the work publicly available for the same exact reasons I wrote above - they wouldn't want anyone claiming there is prior art, even if it's yours! Thus, patenting the work will do the exact opposite of what you intend to achieve.
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2Putting the code on GitHub adds no further security than publishing a paper would provide. In fact, GitHub is a really bad way of proving prior art since it’s hard/impossible to prove a publication date from it (commit timestamps are modifiable and, at any rate, aren’t publication times!). You can try to submit it as evidence of prior art but a competent patent attorney won’t be happy with it, and a patent examiner might dismiss it outright. Furthermore, the choice of license is irrelevant for patentability. Sep 18, 2019 at 14:48
File an application yourself. Preferably both US and EU ("WO"). This is the best method. Unless you genuinely think you've got lightning in a bottle, you're better off weedling your company or school (IP dept) into funding and writing it. In all likelihood, you benefit more from the CV bullet and the plaque than from the commercial invention.
Publish it. In a good, well read journal.
Note: Method 1 is preferable. Method 2, or even just your poster, just "gives you an excuse to sue". But likely won't stop someone else from getting awarded a patent. (A lot of people have the wrong ideas about patents...the true test of patent commercial import comes during litigation.) Method 1 is much more pre-emptive.
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Much more expensive means around US$10000 to US$30000, for people who aren't familiar with the process. And it's actually no better at all then a publication in a reputable journal.– NobodyDec 2, 2019 at 23:18