How to protect your IP with patents in scientific research

Imagine you are a scientist. Your success largely depends on the scientific publication of your work. You need publications to obtain grants for your lab, to attract Masters, PHD, and post-doc students. Publishing moves your field forward and builds your reputation as a scientist. 

You know what they say: publish or perish.

Beyond scientific publications, scientists also attend conferences, present posters, and are always exchanging ideas with the scientific community. Be it publications or presentations, the exchange of scientific ideas is at the core of a scientist’s job.

But some of these ideas have commercial value. Some ideas are worth millions, even billions — for example, life saving therapies. How can scientists protect their right to own, and profit from, an idea?

What are patents in scientific research and publishing?

Scientific ideas with commercial value need to be protected as intellectual property (IP) in the form of a patent. A patent is a legally recognized right granted by a government authority that allows an inventor to exclude others from making, using, or selling their invention without permission. Patents give the inventor exclusive right to an idea so that the inventor can profit from their IP, typically for a period of 20 years.

So why do patents matter if you’re a scientist?

In order to obtain a patent, one must file a patent application. One of the key requirements for approval is novelty; the invention must be new and not previously disclosed, used, or known to the public. If an idea has already been published, it is no longer considered novel and becomes ineligible for patent protection.

This has huge ramifications in the scientific world.

For researchers, publishing findings in academic journals is essential for career advancement, securing funding, and contributing to scientific progress. But here’s the paradox… once an idea is published, it enters the public domain unless a patent application was filed beforehand, or the publication qualifies for a grace period in certain jurisdictions.

Entering the public domain means the idea is no longer considered novel in the eyes of patent law, and anyone could potentially build on it without granting credit or compensation to the original inventor.

For scientists and inventors, this creates a critical timing dilemma: patent first, or publish first? File too late, and you risk losing exclusivity. Publish first, and you might forfeit the ability to patent at all. This tension between open scientific progress and proprietary innovation is an ongoing challenge in research-intensive fields.

In Canada, there is a 12-month grace period from the moment an invention is publicly disclosed to the time a patent application is filed. This means that if an inventor accidentally, or intentionally, reveals their idea before filing, they still have up to a year to seek patent protection.

However, it’s risky to rely on this grace period. Public disclosure can invite competitors to develop similar innovations, potentially complicating or weakening your claim. Also, not all countries offer such a grace period, meaning early disclosure could jeopardize international patent protection.

For the strongest protection, it's always best to file first, publish later.

Easier said than done, but can scientists balance the need to publish and share results to the community while still protecting their intellectual property? Fundamentally, these goals are at odds with each other.

Strategies to protect your IP with patents in scientific research and publishing

Balancing scientific publishing and patent protection is a challenge for researchers. To safeguard intellectual property (IP) while maintaining academic output, scientists should consider the following strategies.

Strategies to protect your IP with patents in scientific publishing

Consider filing for a patent early when possible

The best way to ensure patent protection is to file an application before publishing. Once a patent application is submitted, researchers are free to publish without worrying about losing novelty. This proactive approach:

• Provides stronger legal protection for the invention

• Prevents competitors from claiming similar innovations

• Ensures international eligibility, as not all countries offer grace periods for prior disclosures

If early filing isn’t an option, researchers should be mindful of how they share their findings to preserve patentability.

Technology Transfer Offices

Most major universities and research institutions have Technology Transfer Offices (TTOs) dedicated to helping scientists navigate intellectual property laws. These offices provide:

• Guidance on whether an invention is eligible for a patent

• Assistance with drafting and filing patent applications

• Strategies for balancing publication and IP protection

• Support in securing industry partnerships and licensing deals

Consulting with a technology transfer officer early in the research process can help prevent costly mistakes that could weaken patent rights.

Be strategic with publication

If publishing before filing a patent is unavoidable, researchers should consider limiting the level of technical detail in their publications. Some strategies include:

• Publishing general findings while withholding the precise methodology or key technical components

• Framing the paper to highlight the problem solved, rather than the full implementation details

• Delaying publication until a provisional patent application is filed

Even with these precautions, disclosing too much can still be risky. So, evaluate the potential impact of a publication on future patents.

Use confidentiality agreements

When sharing research with potential collaborators, investors, or industry partners, confidentiality agreements (NDAs) can help. These agreements legally bind all parties to keep proprietary information private, reducing the risk of premature disclosure.

Confidentiality agreements are especially useful when:

• Discussing unpublished findings with companies interested in commercialization

• Presenting research at closed-door industry events or conferences

• Seeking funding from investors or government agencies

Using NDAs ensures that discussions remain protected, allowing researchers to explore opportunities without compromising their IP rights.

Careful disclosure in publications

Researchers can still publish before filing a patent, if they control what information is disclosed. While some level of detail is necessary for credibility, it’s possible to:

• Share findings without providing a full step-by-step reproduction of the invention

• Omit key technical parameters or formulas that would allow someone to replicate the work

• Emphasize theoretical aspects while keeping implementation details private

By strategically controlling how much is revealed, researchers can continue to contribute to their field without giving away their patent-pending ideas.

The Biogen case: Why early scientific disclosures can cost you a biotech patent

In the 2020 case of Biogen Canada Inc. v. Taro Pharmaceuticals Inc., the Federal Court of Canada invalidated certain claims of Biogen's patent related to the use of fampridine sustained-release (SR) formulations for improving walking in multiple sclerosis (MS) patients. 

In their decision, the court went as far as citing a scientific poster that was only briefly presented… in 2002, 18 years prior!   

This case is a great example of the importance for researchers and companies to carefully manage public disclosures to safeguard the novelty and patent potential of their inventions.

Protecting IP without slowing down research

If you want to protect your IP and keep publishing, you need to plan for both. Filing a patent early gives you the most control. It protects the invention and lets you publish freely. If that’s not possible, be strategic about what you share and when. Work with your tech transfer office to build a plan. Use confidentiality agreements before discussing your work externally. And be deliberate about what goes into a publication. You can keep making progress while protecting your IP if you make these calls early.