Scientific progress depends on the publication of results, enabling researchers to build on one another's findings. Industry needs patents to protect its investment in research and development. What happens when these two worlds meet?

In the thriving biotechnology sector, the line between academic and industrial research is fading. Increasingly, universities and hospitals form research partnerships with small and medium-sized enterprises (SMEs) or large companies, or create spin-off companies to exploit their work. As a result, public-sector scientists and research organisations have become users of the patent system.

Does patenting delay the dissemination of basic research findings and thereby slow scientific progress? If so, what type of policy measure would make it easier to reconcile patenting with publishing? These questions are addressed in a recent report from the European Commission to the European Parliament and Council ¹ .

Focusing on genetic engineering research, the report is based on the findings of two questionnaire surveys. These brought responses from 154 academic scientists and organisations - both users and non-users of the patent system - and from 48 companies, large and small, and 30 patent professionals. Its findings highlight the active collaboration between academia and industry in the biotechnology sector.

Perceived delays

Of the academics who had never used the patent system, 40% expected a 'considerable delay' in scientific publication to occur when patenting was envisaged. This contrasts with the view of users of the system, among whom only 8% of the private-sector respondents and 20% of the academics had actually experienced a 'considerable delay'. More than half of the users had noted a 'marginal delay' in publishing.

Interestingly, in some cases the patent system had actually facilitated publication of research results that would have been kept secret without patent protection. The report suggests that scientists familiar with both publishing and patenting could devise strategies for minimising delays. Because the level of detail required in a patent application is less than that required in a scientific paper, the application could be filed before the research is ripe for publication.

Preferred measures

Respondents were asked to rate the 'importance' of five measures for avoiding delays in scientific publication. Most academics, and some SMEs and start-ups, clearly favour a 'grace period' - a limited period immediately preceding the patent filing date, during which disclosure of results does not preclude patenting. Large companies strongly oppose this measure, fearing legal uncertainty.

Waldemar Kütt of the Directorate-General for Research explains. "Many countries world-wide already have some kind of grace period, but the concept is variously defined. This is one of the issues being discussed in the context of current international efforts to harmonise patent law. The question is, can one establish, on an international level, an 'ideal' grace period that satisfies both academia and industry?"

Measures receiving a fair rating from both public- and private-sector respondents are 'support and advice for patent filing', and the provisional patent application. This procedure allows an applicant to obtain a filing date without fulfilling the formal requirements generally required for a patent application. Curiously, academics rank 'awareness measures' lowest, while industry feels that university scientists are not sufficiently aware of intellectual property (IP) and patenting issues.

Support and awareness

"To provide advice and support for patent filing in the public sector, we need professional people on-site doing the job full-time," Kütt stresses. "In the US, each major university, hospital, or research centre has a technology licensing office. In the EU, few public research organisations have such infrastructures - notably, the Pasteur Institute in France and the Max Plank Institute in Germany. The Pasteur Institute has been granted more US patents than any other public research organisation in Europe."

The Commission itself promotes efforts in this area. Workshops are held to train research managers in patenting and licensing issues. The IPR-Helpdesk offers advice on IP issues for Research Framework Programme contractors ² . And the Proton network of technology licensing offices aims to exchange best practice and experience in protecting and exploiting publicly funded research.

A Community patent!

The report mentions several factors that may delay publication. They include regulations concerning the ownership and use of inventions, particularly within public research organisations, and the failure of university-industry partnerships to establish clear agreements on IP management at the outset. But the most significant factor is the absence of a cost-effective Community-wide patent, granted on the basis of a single application. Creating such a patent remains on the EU agenda. The principal hurdles are the language issue and centralisation of the courts in charge of handling opposition procedures and infringement suits

1. The report, "An assessment of the implications for basic genetic engineering research of failure to publish, or late publication of, papers on subjects which could be patentable as required under Article 16(b) of Directive 98/44/EC on the legal protection of biotechnological inventions", can be downloaded from http://europa.eu.int/comm/internal_market/en/indprop/invent/index.htm

2. See 'The IPR-Helpdesk is back!', edition 3/02.

Contact

W. Kütt, European Commission Research DG Quality of life Tl. +32 2 299 4145 Fx. +32 2 299 1860 waldemar.kutt@cec.eu.int

J-L. Gal, European Commission Internal Market DG Industrial and intellectual property Tl. +32 2 296 9845 jean-luc.gal@cec.eu.int

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