By P. Kandiah
Inventors or researchers who have invented a potentially commercially useful product or process are often faced with a dilemma as to whether to:
- Seek patent rights for the invention, or
- Keep the details of the invention confidential (or as a trade secret), or
- Publish the details of the invention and depend on copyright protection afforded by the Copyright Act. The publication could be in a peer reviewed journal, or as a paper presented at a conference proceeding.
Which path to take? That’s the dilemma. Let’s look at the various options available and the implications of each path to the inventor/ researcher.
Where the research is undertaken in an academic institution or in a research institution, there is a culture of publishing the details of the invention in a peer reviewed journal or as a paper presented in a reputable conference. In fact, in many institutions it is a policy or internal regulation, requiring all research output in the institution to be published as early as possible. Academics are still governed by the “publish or perish” rule.
The publication, whether in a journal or in conference proceedings would nevertheless enjoy copyright protection, unless expressly disclaimed. But is copyright protection of the publication sufficient to protect the inventor’s interests or is it sufficient to prevent any other person from taking advantage of the invention disclosed in the publication by using the invention for commercial gain?
Copyright merely allows the owner (who could be the inventor, or the institution where the inventor is employed to do research) to prevent any others from substantial reproduction of the published works, but does not grant any right to prevent others from making use of the teachings or the details disclosed in the publication. For example, assume A publishes an article or a book entitled “The Art of Making Furniture” where modern methods of making furniture are disclosed in detail. The publication (the book or the article) would enjoy copyright protection. What right does A have? Is copyright protection sufficient to protect A’s interests? If say a furniture manufacturer, B, obtains a copy of the publication and follows the teachings in the publication to improve his manufacturing method or produce new types of furniture disclosed in the publication, there is nothing A can do to prevent B from using the teachings or even to demand monetary compensation or royalty from B. A’s publication disclosing the details of his knowledge in making furniture will be deemed to be a donation to mankind (or public) allowing others to freely benefit from the creative or intellectual output. If A (or his employer) wanted to benefit financially from the creative efforts, then A (or his employer) has to claim proprietary rights to the invention by way of patent rights (on the assumption that the creative output is patentable).
Can copyright AND patent rights be claimed for the invention? Or is a claim to copyright and a claim to patent mutually exclusive? Has it to be one or the other? The patent laws of all countries require that the features claimed in the patent should be novel as at the date of first filing of the patent application. So if the inventor has disclosed details of the invention to the public in any manner (e.g., by publishing details of the invention in a journal, on a website or even orally at a conference proceeding/seminar) prior to the filing of the patent application, the requirement of novelty is not met and a patent will not be granted, and if granted it can be invalidated for lacking novelty. Even the inventor’s own publication (where the inventor is named as the author of the paper) is sufficient to destroy the novelty, and is no excuse. (Note: Some countries do excuse such prior publications by the inventor, provided the patent application is filed within a stipulated period (called the grace period).)
It is advisable not to rely on the grace period as an excuse to publish the invention before filing the patent application. However it is possible to file the patent application and thereafter, on the very next day, publish the details of the invention, although for strategic reasons it is not advisable to do so, especially if further research is still being carried out in the subject matter of the invention. The author has personal experience where a granted patent for a commercially important invention is being challenged by a competitor for lack of novelty citing the inventor’s own publication of the invention in his institution’s in-house publications and on the institution’s website.
Alternatively, can the inventor keep the invention confidential or as a trade secret instead of filing a patent or publishing the invention and claiming copyright? If the invention relates to a chemical product or a method of manufacture, details of which can be kept confidential within the four walls of the factory AND which product or process cannot be reverse engineered by analysis of the product which is placed in the market, then it may be advantageous to keep the details of the product or process of manufacture as a trade secret. However in this modern age of availability of sophisticated analytical tools and techniques, I doubt whether such a process or composition can be kept confidential and cannot be reverse engineered. Reverse engineering a product or process is lawful although it may not be morally acceptable or ethical. Further, once the trade secret is leaked out, there is no way the secret can be put back into the bottle. It is also difficult to take legal action against anyone accused of using stolen trade secrets or of obtaining trade secrets unlawfully. If the inventor is desirous of commercializing his invention, then potential investors or licensees would demand to see patent rights and would not be favourable to obtain a licence to use trade secrets.
In summary, it can be concluded where an inventor is researching on an area with potentially high commercial value, he is strongly advised to seek patent rights for the invention (assuming the results of the research meet the patentability criteria) rather than depend on copyright protection or trade secret.
Caution: This area of practice of intellectual property rights is highly technical in nature and is complex. Inventors are strongly advised to seek professional advice from experienced practitioners in the field. This article is published purely for information and should not be construed as legal advice. Each case would depend on its own facts as to determine which is the best way to claim proprietary rights in order to commercialize the invention.
* first published in the May 2014 issue of The Petri Dish (www.bic.org.my/the-petri-dish)
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