By patenting an invention, the researcher guarantees the protection of that intellectual property and increases the chances of the research becoming an innovation for society. Publishing the results before the patent is filed can make protection unfeasible.
Text: Caroline Roxo
Researchers and professors at Higher Education Institutions and Research Centers play a fundamental role in the production of scientific and technological knowledge. In addition, they have the ability to conceive and develop innovations that represent novelties for society, with the potential to generate significant social, economic and environmental impacts. This is evident in examples such as the creation of medicines to treat diseases that have not yet been cured, the development of new compounds that are beneficial to human health and the development of equipment and devices that facilitate and improve various sectors of activity, among other contributions.
When an innovative invention is created, it is common for the researcher to prepare articles for publication in journals and present the results at conferences. However, the protection of intellectual property can be jeopardized by the disclosure of research results, since it is essential that these results are unpublished at the time of filing. Publication in scientific journals, presentation at events, defense of a thesis or even dissemination on social networks can compromise the originality required for the filing process.
“The researcher doesn’t have to choose between patenting or publishing, as it is possible to do both processes correctly and without the publication nullifying the possibility of protecting that technology”, says Diego Musskopf, an advisor to the Patent Directorate of the Brazilian Patent and Trademark Office (INPI).
The body responsible for granting a patent and protecting intellectual property is the National Institute of Industrial Property (INPI). According to Musskopf, when the researcher files a patent with the INPI, which is the protection of the invention that is under the researcher’s control, he has 18 months of confidential protection of that intellectual property and can use this time to publish articles and presentations at conferences. The protection does not prevent the researcher from publishing the results of the research, as long as the patent is filed before the disclosures are made.
A graph of data mapped by the INPI shows the areas that make the most requests for intellectual property protection
Publish or patent: how should it be done?
Publication is an indicator of the production of knowledge and is configured as an employer’s right for the researcher, as well as being a quicker and easier process. Patenting, on the other hand, is the protection of the use of this research, in which the inventor takes ownership of their invention and offers this technology in a more direct form of application, making it possible and viable to promote socio-economic innovation within society.
The point is that the two activities can be carried out together, as long as they are in the right order and in the interest of the researcher. If the researcher wants to have this technology transferred to the market or create a company, an academic spin-off, based on their results, the patent application must precede the publication.
“If I were to give researchers a tip, I would tell them to file first and publish later. That’s my main tip. The cost of filing is low compared to the benefits. The researcher learns something new and has the protected right to that invention,” says Musskopf.
How does filing a technology work?
Identifying the innovative nature of an invention and requesting the deposit of this technology for the protection of its intellectual property is a function that is associated with Technological Innovation Centers, such as University Innovation Agencies, like AGIAgI, the PUC-Rio Innovation Agency, of the Pontifical Catholic University of Rio de Janeiro (PUC-Rio).
Researchers involved in the development of a technology or any applicable procedure must report their research to the Agency linked to the University, with the aim of obtaining assistance so that the potential for innovation can be identified and instructions offered for filing the invention.
“One of the methods used to determine whether an innovation is an invention is to search for data in patent registers. This procedure, known as a prior art search, consists of analyzing the state of the art in specific databases. This analysis can be conducted in conjunction with a literature review, either before the search begins or at the time the Notice of Invention is communicated”, explains the executive coordinator of the PUC-Rio Innovation Agency (AGI/PUC-Rio), Professor Raul Martins.