In a previous article, “Patent and Journal – What are the Differences,” the major differences in assessing an application for the grant of a patent versus a research paper for the publication in an academic journal are discussed. Besides that, getting a patent granted and publishing in a journal serve different purposes. The big question remains – when new findings as claimed by the researchers are inventive and can potentially be marketable in commercial applications, then there could be a dilemma whether to publish such breakthrough in a journal or to apply for a patent or to do both. If both were to be done, which should come first?

Not only patent protection is territorial (they are only protected in regions where they are granted), patent rules are also country-specific. In certain countries, including Malaysia, publicly presenting or using an invention more than one year prior to the application of a patent would render that invention becoming part of the prior art, hence destroying its novelty and eliminating its patentability. Looking at another scenario, patent laws in certain countries, for example, those of the European Union, provides that novelty is destroyed the moment the invention is disclosed to the public. In this sense, there is no grace period for disclosure. Although the Malaysian patent law provides a grace period for disclosure, it is obvious that a patent application should be filed first before publishing in an academic journal to avoid any trouble in the future. It is also important to note that certain journals have their own set of rules about publishing a patented information, so authors are advised to come to terms with the editorial board prior to submitting their research paper.

Putting aside the notion that the road to commercialization is long, the cost issue is also one of the main reasons researchers are refraining from patenting their inventions. The costs to apply for and to publish a patent is generally higher than to publish in an academic journal. However, it is important to assess the market potential for the invention, or the technology or products incorporating it, the value of the invention to the people or institution owning it, and the potential profits expected from the invention to justify the costs of patenting it. If there is a high chance that the invention becomes a valuable entity, it would be best to secure a patent first to prevent and defend against any potential infringement cases in the future.

In many research institutions, the goal is not just to contribute knowledge to the scientific community, but also to generate returns from investing in the research. This is normally done by securing additional monetary grants or transferring the technology created from the research into profitable applications. Publishing in a reputable journal and obtaining a patent are both very supportive towards successfully getting a grant. However, the exclusive right to transfer a technology can only be obtained through a patent and its related licensing. Besides generating income from the exclusive use of the patented invention, patents themselves can be licensed out, sold and used to raise funds, attract investors, foster partnerships, promote branding and even cross-licensed with patents from other institutions to secure the freedom to operate their inventions. A patent or a portfolio of patents is the statutory bargaining chip that represents superior technological capabilities. Intelligent management and execution strategies can transform patents into very valuable assets.

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