Use of academic papers to apply for a patent

An academic paper can be adapted for filing as a patent application in the UK. The patent rights resulting from such a patent application are likely to be more commercially valuable if you follow the advice below.

  • Do not make the paper public before applying for a patent. If you show the paper to anyone, you should make sure that this is confidential.
  • Provide information in the description of the patent application concerning the important features and the key concept(s) behind the invention and if the invention has other uses or applications. Be as clear as you can about whether features of your invention are optional, merely preferable, or absolutely essential. Such statements can affect the scope of patent protection that you may be able to obtain for your invention.
  • Use your paper and any accompanying drawings to describe and illustrate the particular example(s) of your invention in the description of the patent application.
  • Ensure that there is enough information to enable others to put your invention into practice. Avoid referring to other documents to explain the invention, especially unpublished documents.
  • Include a set of claims. Whilst in the UK you can add claims within twelve months of submitting your description, it is advisable to file the claims when you initially apply for a patent. (When applying for an international patent under the PCT or patents in some individual countries, you cannot add claims later so you must include claims in your initial patent application.)
  • Include in your patent application everything that you may need to rely on at a later stage, as far as this is possible. You cannot add further information to your patent application at a later stage, and once your paper is published the options for amending and making the most out of your patent application will be severely limited.

Typically, a paper written solely for the purposes of publication in an academic journal will not, without further amendment as outlined above, result in valuable patent protection. Whilst not generally advisable, filing an unamended paper as a patent application before publication of your paper would secure a filing date and therefore place you in a better position legally than if you only consider patent protection after publication of your paper.

The above suggestions can raise complex issues and you should therefore consider seeking advice from a patent attorney or other professional adviser. A list of patent attorneys is available from the Chartered Institute of Patent Attorneys (CIPA) External Link and most classified telephone directories list local patent attorneys. There are other patent advisers, consultants and inventor-support organisations who may also be able to help or advise you. You may also wish to consider approaching the commercial or legal department of your academic institution for assistance.