Who owns the rights to a new innovation described in a research paper? If a patent is in place, the answer is simple: the owner. Generally, the lengthy, and confidential, peer-review process means that authors of unpublished work have ample time to submit an invention disclosure and to have their technology transfer office review and if necessary, file a patent, ensuring that any new invention is protected prior to any public disclosure. However, the rise of “preprint” services, which allow authors to publish preliminary findings ahead of peer-review, has complicated this process. Preprints can severely hamper the ability of authors and their universities to patent new inventions described in their work if appropriate steps are not taken prior to public disclosure. Whenever possible, university researchers should consult with their technology transfer office prior to submission of manuscripts to a preprint server to ensure that any patentable inventions are adequately protected.
Scientific manuscripts accepted for publication as preprints have become increasingly common in the past decade, as searchable databases such as bioRvix and MedRxiv allow authors to publish their work online with relative ease. Many authors choose to publish preprints because their findings are negative or contradictory and have a low chance of being published in a journal. Others may publish preprints to obtain quick and wide feedback for work that is concurrently receiving peer-review. Preprints often gain substantial exposure, especially for the many studies concerning research related to COVID-19. In fact, many scientific studies cited in the media are preprints awaiting peer-review.
Preprints certainly have their place and help to enable rapid distribution of scientific results and can help give an article beneficial attention, but authors should be aware that they also complicate the process for protecting new, and potentially valuable innovations that may be described in a paper. While traditional peer-review can often take months to complete, the preprint services often compress this process into days or weeks, meaning articles may be published before authors or inventors and their respective universities have had a chance to evaluate the invention and to file a patent application. Under most countries’ patent laws, any invention that is disclosed publicly before a patent application is filed may be considered “prior art,” and therefore may be ineligible for patent protection. It is therefore critical that authors and innovators work with their university to file the appropriate patent applications for their work before submitting manuscripts to preprint services to protect any potentially valuable intellectual property.
Researchers seeking to commercially market new innovations should be aware of the consequences of foregoing intellectual property rights by publishing early. Without adequate protection, it is unlikely that a commercial partner will be able to further develop and eventually distribute products based on the innovation. Patents provide an incentive to commercial partners to invest in new inventions, and without some guarantee of exclusivity, industry partners are likely unable to move promising technology to market. The university technology transfer office is accustomed to working with researchers (even on tight timelines) to ensure that new innovation can be successfully protected and commercialized while balancing the need for rapid publication.
University researchers should contact the tech transfer office early in the study, especially if the resulting data look promising. “We’re always happy to work with our researchers on filing a patent before a public disclosure, and the earlier we can be involved, the better protection we can secure for our intellectual property,” notes licensing associate John Nicosia. Preprint manuscripts often generate positive attention for the research within the scientific community, the greater public, and those business development professionals looking for the next big discovery. However, researchers seeking to patent new innovations arising from their work must be aware of potential pitfalls before submitting a manuscript for preprint publication.