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I have seen some discussions in this community about Academia vs. Market world. However, they couldn't satisfy my this question:

Assuming what is written in answer of Why is Paper Publishing and getting a patent completely unrelated? by @Anonymous_Mathematicia, I can submit my paper and file the same idea as a patent, in parallel. However, it seems that it will cause a problem: Journals normally ask authors to submit only the "non submitted to others" studies and ask them "not to submit it anywhere else before rejection/withdrawal". Now, there are two plans (only the second one seems reasonable but I mention both for covering the possible cases) (a) if I am submitting the journal paper before filing the patent (that seems dangerous), then will I have the right of filing it for a patent? However, for plan 'a', even if for journal it is okay, for patent policy it may be considered as revealing the idea and burning the opportunity! (b) If I have filed (or published) the patent before submitting the journal paper, will I have the right of such submission?

In other words, is a published patent besides its copy as journal paper considered as double publication?

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    Often "submit" in this context means "submit to a peer reviewed journal". If you want to be certain, ask the journal's editor
    – Nate Eldredge
    Nov 15, 2015 at 14:37
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    Keep in mind that publication in a peer-reviewed journal can count as prior art and invalidate any subsequent patent applications, so be sure to consult a qualified IP lawyer in your jurisdiction before submitting the manuscript to a journal.
    – E.P.
    Nov 15, 2015 at 20:10
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    @E.P. First of all thanks for your comment (I was in a long trip and came back to work today). Although I am not sure if the paper of the inventor is considered as prior art, it of course will be considered as revealing the idea. That's why I had mentioned it as "dangerous". The main issue is opportunity of having them both without legal problems (related to both patent office and journal regulations)
    – hossayni
    Nov 17, 2015 at 9:11
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    Indeed, that's the main issue, and both sides require equally careful consideration, in terms of what to publish but also in what order. My point is that there is the possibility that a journal publication will prevent you from filing a patent later on, and if that is an outcome you consider undesirable then you need to take specific steps to prevent it. That includes consulting a qualified lawyer, or you risk the chance of you patent not going through.
    – E.P.
    Nov 17, 2015 at 10:26
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    Related: Can I patent work after I have published a paper about it?; Does applying for a patent first make it more difficult to publish (or vice versa)?; If a paper or software is released to the public, can the university still file a patent?
    – E.P.
    Nov 17, 2015 at 18:57

2 Answers 2

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In other words, is a published patent besides its copy as journal paper considered as double publication?

Typically there is no copyright problem, because there is no overlap in the text. A patent consists of formal legal writing, and it generally does not use any of the text of the academic paper. If you wanted to use some of the same text, then you would need to make sure the publisher of the paper did not object. However, this is uncommon: academic and legal writing styles differ substantially, and they are aiming at very different purposes, so any substantial overlap would indicate that you are doing a poor job of at least one of the two (and you might as well avoid minor overlap so that you don't have to address the copyright issue).

Even aside from copyright, there is still the question of whether this is considered a form of double publication or simultaneous submission. I believe the answer is almost always no: patents don't count as academic publications and publishers will not care or object. However, it can't hurt to ask before submitting, just to make sure this is how it works in your field and for this particular journal. It's also a good idea to mention the patent submission in your cover letter when submitting the paper, so that nobody could accuse you of concealing this information. (I'd be shocked if it were a problem, but better safe than sorry.)

Keep in mind that very little of the academic content will actually appear in the patent application. Academic papers are typically focused on experiments, data analysis, or theory, but these would not be included in the patent application itself. Instead, it is a description of an invention and how it is used in practice, together with a long list of legal claims laying out which aspects of the invention are worthy of legal protection. Academics could learn something from the description of the invention, but it in no way substitutes for the academic paper.

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    This answer is misleading and one-sided. In particular, it's very important to note that publication in a peer-reviewed journal can count as prior art and therefore invalidate a subsequent patent submission. The details surely depend on the jurisdiction, and the OP would be well advised to consult a local IP lawyer before submitting to the journal. In any case, I'm worried that the accepted answer on this site makes no mention of this.
    – E.P.
    Nov 15, 2015 at 20:09
  • @E.P., if the prior art is YOUR prior art, there is no issue.
    – dwoz
    Nov 17, 2015 at 18:15
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    @dwoz That is simply incorrect, or at very best it depends on the situation and jurisdiction (and is thus incorrect as a general statement). From e.g. the APS copyright FAQ, "you should be aware that submitting a manuscript to a journal without first taking steps to protect your patent rights (e.g., filing for a patent) could endanger those rights." And, as they rightly say: "Consult your patent attorney".
    – E.P.
    Nov 17, 2015 at 18:50
  • It may indeed be the case that in some situations a journal publication by the author of the patent may not count as prior art. (If you think that that is a general statement, you need to provide references.) However, publishing without checking first is just asking for a "well, why didn't you...?" if it turns out it wasn't OK.
    – E.P.
    Nov 17, 2015 at 18:54
  • @E.P., unfortunately you are misreading that APS faq. What they MEAN by that, as I have elaborated in other comments, that you are at risk that someone else will beat you to the gate with a patent application if you publish first without putting in a patent application, NOT that your right to file a patent application will be itself endangered.
    – dwoz
    Nov 17, 2015 at 20:22
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One other thing to consider is even if you submitted a paper and a patent application simultaneously...

...and even though the paper acceptance/publishing process can take years...

...the paper will likely STILL come out in print before the patent is granted! (if it's granted)

The key fact though, is that an academic journal and the patent office don't consider themselves to be competitors, and in fact are NOT competitors.

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  • Thanks for your useful answer. Could you please clarify your answer in these two cases: (1) If I have submitted the journal paper (even a little) before filing the patent, I suppose that it will be considered as revealing the idea and burning the opportunity; am I true? (2) If I have submitted the journal paper after filing the patent but regarding the very time-consuming process of publishing a patent, the journal paper will be published sooner, (although journal and patent office are not competitors) isn't it revealing the idea that is forbidden by patent office regulations?
    – hossayni
    Nov 17, 2015 at 9:27
  • @hossayni, both "concerns" are moot. Announcing a discovery before the patent is filed doesn't affect the patent. It represents a slight risk in that someone else could possibly jump in ahead of you though. Also, filing a patent application is BY DEFINITION making public disclosure of the idea. The patent office discloses the idea, and other interested parties have an opportunity to challenge it, if they want to.
    – dwoz
    Nov 17, 2015 at 18:20
  • I suppose that you agree even in america, announcing the discovery affects the patent and the effect is starting the 1-year reverse-chronometer (however, it is as wide as not necessary to worry about). Worse case happens in some where like Europe that to the best of my knowledge revealing the idea to anyone other than patent office burns the opportunity of filing the patent. The point is it is recommended that patent office be the first who reveals the invention.
    – hossayni
    Nov 19, 2015 at 15:32
  • In the USA, I can announce a press conference for tomorrow, where I announce to the world that I've solved faster-than-light travel, and present a paper. Then, on Tuesday, I can go down to the patent office with my patent application and my payment check, and they will be utterly happy to take my application and grant my patent...providing of course it succeeds through the process. The only snag? If on Monday someone beats me to the window with a patent application based on my paper, I may not get the patent. However, even in that case, their patent application is relying on my prior art..
    – dwoz
    Nov 19, 2015 at 16:59

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