I'm working on a nearly completed paper in CS. It deals with a memory module design, which, apart from being a novel idea, turned out to be of potentially commercial value. Now I was thinking of patenting it, of course, I doubt I will be able to make its commercial development a priority of mine until at least I finish my PhD (relatively soon) and find some "solid ground" in academia (I have some job offers, but can't specify any amount of time). However, I am under the impression that this should not prevent me from protecting my work. As I am quite inexperienced with it, I must also ask if I'm having the right conception and approach to patenting here? What is the procedure of patenting an idea that is to be published in a journal? Are there any consequences?

  • What did your supervisor say? What did your university's IP specialists say?
    – 410 gone
    Mar 17 '14 at 11:44
  • I talked naturally with my supervisor, he said that it was in the end my decision, as it was my idea. He was supportive from the start, especially since this is not my main research, but some side project, for which he was kind enough to let me spare a few hours a week and offer moral and academic support. His approach would be: 1. file for patent 2. wait for acceptance 3. publish paper I'm not quite sure if we have any IP specialists at the uni, I haven't heard of any, nor did anyone mention them...
    – lagort
    Mar 17 '14 at 11:52
  • 5
    It's almost certain that your university does have IP people. And if you don't talk to them now, you may hear from them later when they sue you claiming a share of your patent. Mar 17 '14 at 23:29
  • @NateEldredge +several_million rep points! Extremely important point, this!
    – dearN
    Mar 18 '14 at 21:40
  • @drN what happened to you?
    – Troy Woo
    May 11 '15 at 17:54

I was recently speaking with a colleague of mine who had done a lot of work in the IP area. The comment I received was that it took a lot of time from initial idea to the awarding of a patent—typically about three years and potentially lots of money (thousands of dollars or euros, depending on the filing location).

Depending on your local laws, you may be able to use your manuscript as part of the provisional patent application (an initial filing to the relevant patent office saying "we're going to file a real application soon"). However, as EnergyNumbers has suggested in a comment—you must contact someone with knowledge of local patent laws, as the rules vary greatly between countries. If your university has such an office (check with their grants and funding office for suggestions about whom you should talk to), this will save you the expense of hiring a patent attorney.

  • Thanks. I was under the, obviously wrong, impression that those procedures would need symbolic cost and negligible administrative time. I'll definitely ask around the uni. Have you any comments on how this works with a paper publication involved? Can a published paper prove authorship over an idea before the patent is approved/submitted?
    – lagort
    Mar 17 '14 at 13:23
  • 4
    You have to be careful about this. Depending on where you are, publishing your paper can either prove ownership of the idea (good) or establish prior art (very bad, as your idea is no longer "new"!).
    – aeismail
    Mar 17 '14 at 13:27
  • @aeismail why is that? Then shall we make the date of publication strictly later than the filing of the patent?
    – Troy Woo
    May 11 '15 at 17:56

If what you have is potentially patentable do not publish any critical element before filing the patent application or you risk losing eligibility due to existence of prior art (even if it is yours!).

Be aware that your university may claim ownership of the IP since it concerns ideas that you got in the context of a project while they were paying you (my university would claim partial ownership). This need not be a problem, as this also means they get to pay the piper. This is not necessarily an issue since, if your name is on the patent, you are entitled to a slice of the cake.

You should really talk to patent experts. Your university probably has them. Most universities have a dedicated tech transfer office (TTO) which handles patents, spin-offs and industrial collaboration. They have the expertise to guide you in such endeavours.

  • Does that mean that the uni could further develop and commercialize my idea, while I would still get paid a percentage as co-owner? That is obviously a situation that benefits both parties, and I would most certainly have no objections to that. Of course, I realize that the exact implementation depends on the policy of the uni, but I wanted to ask some other experience, mainly to prevent being clueless or being under the wrong impressions when talking to (hopefully adequate) faculty staff.
    – lagort
    Mar 18 '14 at 14:33
  • @lagort this is the usual route for good ideas once the TTO gets involved. The specifics depend on the university, your advisor and you. This certainly has potential to become a win-win situation so it is worth pursuing. Mar 18 '14 at 14:38

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