IS IT POSSIBLE TO SOMEONE WHO HAS READ MY THESIS GET A PATENT ON IT AND THEN PROHIBIT ME OF USING MY OWN INVENTION?

17 May 2017

As a rule a PhD thesis is public. That´s also the case of Master´s Dissertations, etc Except in a few cases where it is held in secret. And these occur, exactly, when there is the intention on patenting the thesis´ content. In this scenario, besides the access to the presentation be restricted, there is also the signature of non-disclosure agreement. Why all this care?

 

Because once published the thesis - and that´s the case for any document - it becomes prior art. And when we talk about prior art, we talk about the entire world! That does not stop anyone of trying. So, the answer of your question is YES - someone may try to patent your invention and file for a patent application. But a patent application is not a granted patent, it´s just an expectation of a patent being granted some day in the future... It may also be denied. The granting of a patent is not automatic, it is conditioned to a technical examination that verifies if its content fulfills the legal requirements. During this exam, one of the core tasks of the examiner is to determine prior art. Guess what´s going to happen when he/she does that? Voilà! He/she will find the original thesis leading him/her to the conclusion that the invention is not novel, one of the requirements for a patent. Consequently, the application will be denied. So, the final answer to your question is NO. YES, someone may try to get a patent on your dissertation/studies and NO - he/she does not have the right of patenting it because it is not new. 

 

Of course, this answer is only valid in an ideal world, rsrs In the real world, an examiner in the country where the thesis was published will probably includes in his/her prior art search the national thesis databank, but it´s unlikely that the examiners in other countries also do the same. Even because thesis are normally written in native language. It´s hard for a japanese examiner get access to a brazilian thesis, written in Portuguese, for instance. 

 

So, it´s possible to arrive to two scenarios: in the first, as the examiner didn´t find the thesis he/she will mistakenly conclude, that the invention is new. If the other requirements are fulfilled, it´s possible that the patent is granted...In this case, as the granting was an error, the patent is invalid and anyone interested, including the thesis author may oppose to the grant and require its revocation by sending to the Patent Office, in this example, a copy of the PhD thesis. Even before the granting, you or any other legitimate third-party may give the examiner a little help sending the document. The name may change, because the patent hasn´t been granted yet, but the logic is the same. In EPO it is called Pre-Grant Third-Party Observation.

 

However, still dealing with the real world, to publish only the thesis is very, very rare. Most probably, its content will also be published in the form of an article in a scientific journal or even a book. In this case, it´s much more difficult to the examiner to miss this document because they are usually indexed in databanks frequently searched. May it happen that still the document is not found? Yes, it may. It´s difficult, but not at all impossible. Here, the same rule as in the first scenario: Pre-Grant Third-Party Observation or Opposition. 

 

There are companies whose job is exactly to guarantee that the technological information is found by the searcher. They search documents in various sources, make translated summaries, mark the documents with key word, develop search algorithms... everything to increase the chance of the searcher to find exactly what he/she is looking for. No surprise they charge a fortune. And there are companies that pay for their services. Because no one wants to re-invent the wheel! Imagine to spend a fortune inventing and filing for a patent just to see your application denied? Or granted, but then revoked? Or being prohibited to sell your own technology in a territory? That´s why, I never get tired of repeating: a detailed prior art search is the key to enter in the patent world! The patent offices - at least the big ones - also pay to access these databases of what Derwent is an example.

 

At last, answering your question right away: IS IT POSSIBLE TO SOMEONE WHO HAS READ MY THESIS GET A PATENT ON IT? He/She may try. If the patent be granted, he/she may prohibit you of using your own invention. But you can counter-strike informing the patent office about the existence of a prior document. So, patenting someone´s thesis is not something I would recommend to be done, rsrs 

 

Before finishing, though, I just want tom make two provocations: first - and if the filling of the application is before the date of the publication of the thesis? In this case, there is, in theory, the right for a patent. I mean, in theory, because there may have been a theft, violation of a non-disclosure agrreement... but here we get in other areas of Law that it is not IP and, hence, not the object of this blog. If the access has been legitimate, the first to file has the right for the patent. And, nowadays, is like this, even in USA: there is no meaning is saying: "I´ve invented first". 

 

The second provocation is that others may improve your invention. If this improvement is non-obvious, it is possible having a patent for this new, improved version! But we are already talking about another patent requirement... non-obviousness or inventive step. Rsrs And this one I leave to another post!

 

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