Publish or perish - that has been
the traditional scientific maxim, at least in the field of public
or academic research. The publication of results in recognised specialist
journals has always been seen as the key not just to the validation
of research results and the dissemination of knowledge, but also
to the career progress of researchers. The number of articles published
forms the basis of a researcher's standing in the scientific community.
Researchers are nevertheless facing a dilemma.
Before rushing to publish - which until now had validated new scientific
knowledge - is it not preferable to begin by instigating the lengthy,
complex and costly procedures leading to the legal protection of
intellectual property rights (IPR) such as patents or utility models,
with a view to the exploitation of future applications?
Paradoxically, given the characteristics of European
patent law, the two approaches are mutually exclusive and researchers
now find themselves in a no-win situation. Publishing scientific
results, presenting them at a conference, or simply revealing them
to a colleague not bound by a secrecy agreement is enough, in Europe,
to prevent any subsequent protection by patent. To do so is to violate
one of the cardinal rules on which any subsequent procedure to obtain
IPR must be based - absolute originality. The innovation cannot
have been divulged, in any form whatsoever, before making the patent
Six to 12 months' grace
researchers have consequently launched a wide-ranging debate in
which they are calling for a grace period, which would overcome
this difficulty. This is a simple mechanism, already in force in
countries such as the USA, Japan and Canada, under which it is possible
to reveal the results of scientific research while retaining for
six months or one year the option of applying for a patent to protect
them. Researchers are obviously in favour of this. In Japan, however,
nearly half of those who use this grace period are large companies,
whereas in Europe industry representatives oppose the system. Should
it be adopted systematically in Europe? This is the question that
has recently been hotly debated.
In October 1998, the Commission invited about
150 experts to Brussels to hear their views. The following year,
the Intergovernmental Conference of Members of the European Patent
Organisation asked the European Patent Office (EPO) to 'consider
under what conditions the effects of divulging information [prior
to the patent application, through a publication, presentation or
simple scientific communication] could be taken into account under
European patent law.'
A classic dispute
occasions invariably produce the same old arguments. The main supporters
of a grace period are public sector researchers and, to a lesser
extent, certain SMEs. The former want to be able to publish or diseminate
their results without delay; the latter stress that before applying
for a patent they want to be able to carry out a better evaluation
of the invention's technical or commercial potential, such as through
prototype testing or by allowing third parties to test - actions
which amount to divulging information.
Industry on the other hand opposes the grace period
on the grounds that it creates legal uncertainty. It argues that
if potentially patentable results are published it blocks any decision
on their industrial use for several months, that is until it is
known the extent of any claims linked to subsequent intellectual
property rights which may be registered. In a report drawn up at
the request of the EPO, Jan Galama, head of intellectual property
with Philips International, stresses that the right to a grace period
is a double-edged sword for the scientists themselves. In his view,
in certain hot technological fields such as biotechnology, pharmacy
and information technologies, the protection given theoretically
by the right to a grace period is far from guaranteed. He believes
the risk remains high of the author of a publication being robbed
of the means to use the results subsequently by deft competitors
using methods difficult to attack in a court of law. "The present
economic and competitive environment does not allow us to grant
ourselves the doubtful luxury of a generalised grace period", stresses
Another expert consulted by the EPO, Professor
Joseph Straus of the Max Planck Institute for Intellectual Property
in Munich, nevertheless calls for just such an option. He believes
that in the field of scientific research not even the immediate
submission of a patent application "guarantees researchers absolute
legal certainty", if only because of the lengthy period (18 months
for the EPO) between filing for a patent and its publication. He
points out that where a grace period used to exist, such as in Germany,
Italy, the United Kingdom and Ireland, it was used as a simple 'safety
net' against inadvertent divulgations and to permit testing. "No
cases of abuse were revealed", he stresses. He also points out that
such a system currently exists in 39 countries which all (except
the United States) apply a 'first-to-file' system and calls for
worldwide harmonisation of the grace period.
Straus's thinking is in line with general opinion, which considers
that any grace period must be implemented at a global level if it
is to work. This is a very topical issue with negotiations currently
in progress at the World Intellectual Property Organisation (WIPO)
in Geneva, with a view to adopting a new treaty in this field, known
as the Substantive Patent Law Treaty.
The text under discussion includes an article
mentioning the grace period, despite it having been rejected during
previous negotiations in 1991. The Commission only has observer
status in these negotiations by the Member States and has no official
position on the subject. Nevertheless, the Research DG will be soon
bringing together the parties to arrive at a minimal position.
'It would be preferable for all the Member States to speak with
a single voice in defining the characteristics of this grace period
if it were to be adopted,' explains the Professor Strauss.
The 'provisional solution'
is another solution, which could resolve this dilemma for researchers:
a provisional patent application. Under this system, an inventor
who does not yet have all the necessary elements for a patent application
( or who cannot yet afford the expenditure ( can file a summary
description of his invention with the patent office, thereby obtaining
a period of one year to complete the application and pay the fees.
It is not difficult for researchers to produce
such a project description on the completion of their research.
They could thus publish their results without foregoing the possibility
of their 'parent' organisation or university being able to take
out a patent at a later date. This system was introduced in the
United States in 1995 and most experts agree that some of the provisions
of the European Convention on Patents and of the Patent Law Treaty
of June 2000 have much in common with it.
It must, however, be stressed that this solution
is mainly advocated by opponents of the grace period, primarily
industry, while researchers view it as insufficient. Professor Straus
stresses that "this system does not provide sufficient protection",
in particular because researchers do not automatically envisage
patenting at the time of publishing an article, and that the risks
of such an application being divulged are "enormous". He adds that
changes to the law needed to introduce it would be far greater than
to introduce a grace period.
not so secret life of patents
Even without a grace period in Europe,
making a patent application is certainly no obstacle
to the dissemination of knowledge. Paradoxically ( considering
the notion of secrecy often wrongly associated with
the concept of a patent ( a patent is itself a kind
of publication. Patent applications are published 18
months after filing and are accessible through public
databases. What is more, any patent application must
describe the invention in sufficient detail to enable
any member of the profession to reproduce it.
In this respect, patents are a response to industrial
secrecy and historically this was the main reason for
That leaves the question of deadlines.
Should the publication of an article be delayed or an
invitation to a conference refused so that a patent
application can be submitted? Supporters of the use
of intellectual property rights in the research field
believe that such cases are much less frequent than
is widely believed. A survey among more than 200 researchers
and institutions in the field of biotechnologies ( a
sector in which scientists are increasingly experienced
in filing for patents ( showed that just 20% of public
researchers and 10% of private sector researchers believe
that the need to patent significantly delays publication.
patent or not to patent?
There is also a type of uncoded knowledge,
which it is impossible to patent or publish but which
is crucially important nevertheless: technical know-how.
The only way to circulate it is through the people who
possess it. The simplest way is for the researcher to
join an industrial team, whether temporarily or permanently.
In fields such as the biotechnologies,
information technologies and advanced materials, the
transfer of knowledge to the private sector over the
past few years has also resulted from scientists setting
up their own innovative small businesses. These spin-offs
are frequently located on campus (where, at least initially,
they benefit from access to the technical facilities
of their university or organisation) and provide very
advanced services or products to major industrial firms
which are unable to develop them themselves. Biotehnology
SMEs, for example, sell access to genetic databases
equipped with computer-based tools or biological systems
for the screening of therapeutic molecules.
Their formal and informal knowledge
( patents, exclusive licences and individual know-how
( constitutes their sole capital. It is that which they
offer as a guarantee to investors with venture capital.
A knowledge economy has thus developed in which intellectual
property and technical knowledge are a veritable currency.
property is intellectual
A specialised United Nations institution
based in Geneva with 179 member states, the World Intellectual
Property Organisation (WIPO) aims to 'promote the use
and protection of works of the human spirit'. It administers
23 international treaties on intellectual property (from
copyright to industrial models, including trademarks
and patents). Its field of interest therefore covers
the world of ideas and creativity in the widest sense,
whether works of art or scientific inventions. This
is reflected in the subjects of the exhibitions it holds
at its Geneva headquarters, such as 'Women who invent',
'Music in the digital age', 'Invention in the home'
and 'Comic strips, cartoons and creativity'.