PATENTS & PUBLISHING

To ensure that the invention is patentable, the following checklist is a minimum that must be considered:

• Be of patentable subject matter, i.e. a kind of subject-matter that is eligible for patent protection
• Be novel (i.e. at least some aspect of it must be new)
• Be non-obvious (in United States patent law) or involve aninventive step (in European patent law)
• Be useful (in United States patent law) or be susceptible ofindustrial application (in European patent law)

This novelty requirement, to ensure patentability of any invention generated in a research laboratory, makes that the opportunity for obtaining a patent can be lost by publication of the underlying research. No disclosure of an invention should be made available to the public in any way anywhere in the world prior to a patent application being filed. This includes publication in grant applications, journals either as articles or as letters, oral presentation at seminars, or information posted on notice boards on the Internet, abstracts, theses, e-mails, poster displays, exhibitions, open days, or confidential disclosures to many people. Any "enabling" information about an invention which is published in any way will constitute a disclosure and weaken or destroy its patentability. An enabling disclosure is one which provides the means by which someone skilled in the subject could reproduce the work about to be patented.

Patent provisions in the USA are different (they operate a first to invent system, rather than the first to file system), and if the invention has been disclosed, TTO and its patent attorneys will advise if necessary as to whether it is still possible for valid patent protection to be secured in the USA.

Patenting will not prevent you from publishing your work. A patent application can be prepared and filed quite quickly (days, more normally weeks) once a patent attorney has been instructed. As soon as the patent application has been filed there is no restriction on subsequent publication of the invention, subject to the points below.

Following the filing of an initial patent application, no information which is new or additional should be published without first checking with the patent attorney involved in the case. It is possible that the new information could be included in the patent application. If the information needs to be included in the patent application the only way this can be done is by way of a new updated application; and the same requirement for novelty as discussed above will apply in so far as the new application is concerned.

Any new patent applications filed within a year of the filing date of an original patent application for the same invention are entitled to claim the filing date of the original application. After the first year it is no longer possible to claim priority, and any publication of the invention during that year could be used to challenge the validity of any subsequent application filed outside of the first year. This is important in case it becomes necessary for the original application to be abandoned in favor of a new application with a new filing date.