At a recent symposium I attended, several “studentpreneurs” were showcasing their innovations which had been supported by a local technology incubator. It was heartening to see how passionate the students were about their innovations, and the determination they brought to their projects. One chemical invention particularly caught my eye, as it purportedly solved a problem with which I am quite familiar, and which could have wide application. The student’s poster presentation was impressive, much of it describing the advantages of the invention, while not specifically disclosing the chemical composition. After talking with the student for a few minutes, he proceeded to hand me a sample of the composition in an unmarked vial from an unmarked bag. My instincts as a patent lawyer were immediately piqued. If a product is capable of being reverseengineered, handing out a product to the public could constitute a public disclosure. Rather than assuming confidentiality based on an unlabeled vial, the best way for the student to protect his invention would have been to file a patent application. Unfortunately, the student had not.
You may be asking yourself why I am getting hot and bothered about public disclosures. In a few weeks’ time, Québec city will host the 96th Annual Canadian Chemistry Conference and Exhibition, where hundreds of chemists from across Canada and around the globe will congregate to present their research in public forums. There will be abstracts. without the concerns of confidentiality as required by the patenting process.
As we approach the annual Canadian chemistry conference, now is a good time to think about the information you may eventually disclose, and whether it would be worthwhile to protect that information in a patent application. Any form of disclosure including journal publications, conference abstracts and presentations, and research proposals, could constitute a public disclosure precluding you from realizing the benefits of your hard work. So before you disclose, protect yourself and file a patent application. Then feel free to let the world know about your invention.
Mike Fenwick is a patent lawyer with Bereskin and Parr LLP in Toronto and holds a master’s degree in organic chemistry.