Publication Pressures and Clearance Processes
By Joshua Goldberg, Co-Managing Partner
Publication is a core objective in academia, creating direct tension with patent
requirements, particularly in jurisdictions requiring absolute novelty. Faculty and
students often seek to publish quickly through journal articles, conference
presentations, or thesis defenses, sometimes without informing others at the university
of their plans.
To manage this risk, universities typically implement publication review or clearance
processes. Researchers are required to submit proposed publications for review prior to
submission to a journal or other potential public disclosure. The TTO evaluates whether
the disclosure is enabling and whether a patent filing should precede publication. This
evaluation can be conducted internally or also with the assistance of outside counsel.
Where necessary, provisional applications are filed, often on an extremely expedited
basis, to preserve patent rights prior to publication. In some cases, publication timing
may be adjusted, or additional data may be requested to support broader claims. In
other cases, a one-month time period to prepare a patent application can quickly
become merely a few days upon the discovery of a journal article that is about to be
imminently published. Still, this is a better scenario than one in which the inventor keeps
their outside publication a secret from others at the university and outside counsel, only
for it to be discovered by a patent Examiner during patent prosecution.
Compliance with such publication rules and requirements remains a challenge,
particularly in collaborative or interdisciplinary research. Education is essential to ensure
that inventors understand the consequences of premature disclosure and the
importance of early communication with the TTO.
