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I am currently a Master's student in Engineering. Recently I have begun working on a project that (I believe) to have tremendous value and applicability to industry.

Being that I am a master's student, I am looking for feedback and possible collaboration on my project. For this reason, I have the idea of posting software on a site (github) that will make the source-code available, with instructions on assembling the necessary hardware, running the program, and interpreting the results.

My question boils down to:

  • Is it advisable to post source-code online for a project which may lead to patents?

  • What are some of the considerations when deciding to take this course of action (posting source-code online) ?

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    Are you in the United States? Or more specifically, might you be interested in patenting your inventions anywhere other than the United States?
    – Matthew Haugen
    Jun 24, 2016 at 10:46
  • Good question that I had not considered. I am located in US and most likely will only seek patents in the US.
    – J. Roibal - BlockchainEng
    Jun 24, 2016 at 14:57
  • Approach the licensing department at your university. They can guide you to the patentability of your software and will probably do the patenting for you.
    – Eric S ♦
    Feb 7, 2017 at 18:08
  • Mr. Roibal the key to safe posting of coding is to always recognize your self as the original of the software code. This can be done securely using a unique registered authorization key that only you have the SSL (secured license to own). Thus, any code posted anywhere, is assoicated to your key and recognises you as the Origial owner and creator of the code or software.
    – user18592
    Mar 1, 2017 at 15:41
  • (a) Although this is not a copyright forum, you must consider whether your code incorporates copyright work of others. (b) It's always hard to see into the future, but actions you take now will close/facilitate future possibilities, so you need to try. Are you thinking of making a business out of a product based on your code, or turning it somehow to material gain? Or are you mainly concerned about credit/reputation, and improving your cv for working in industry or university? No need to post answers as long as you know for yourself what the answers are and prepare to follow up on them.
    – terry-s
    Jul 7, 2017 at 15:14

4 Answers 4

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As a university student you should definitely consider working with your school's legal department. It may be in your best interest to allow the school to pursue the patent rather than doing it yourself. First, depending on the circumstances, the university may actually own the fruits of your labor. Even if this is true, my experience has been that the inventor generally gets good benefits compared to work for hire at a company. The university will have patent lawyers which can give you a patentability assessment and if patentable may pay for the patenting which can cost many thousands of dollars. Many universities also have extensive licensing departments which can help monetize a patent.

Do not publish your code or any other description of your algorithms before filing the patent.

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It depends on what your goals are. Generally one should file patent applications before publishing the invention. But what is your goal in seeking patents?

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  • To protect my IP.
    – J. Roibal - BlockchainEng
    Jul 6, 2016 at 2:43
  • First -- it might not be your IP at all, depending on the university you attend. Second -- what's your perspective on conflicts among: protecting your IP, getting your product used, keeping it open source? Third -- there may well be conflicts between open source licenses and your desire to enforce your patents.
    – Ben Kleinman
    Jul 7, 2016 at 3:08
  • I like that Ben reminded about the IP linked to your University. Universities are very protective and many policies have been created to maintain the IP's intra muros. Make sure that any objections possible from your University is cleared off before attempting to patent. Academia is not very forgiving.
    – Michel Beaussart
    Jul 20, 2016 at 23:14
  • May I add that if the university default owns the IP to your research that may actually be good for you if they pursue the costs and hassle of a patent. They will hold the rights, but they, by law, must list the actual inventor(s) and having a patent pending on your resume right out of school looks impressive... especially if you don't have to pay for it ;)
    – JSH
    Aug 9, 2016 at 17:07
  • I don't agree with the sentiment discussed here. Unlike an employer, Normally a University does not own your IP. The obvious exception would be if you are employed as a research assistant, and even then universities tend to be less restrictive than engineering employers. You should be able to ask for your paperwork and restrictions.
    – CircuitGuy
    Jan 8, 2017 at 1:46
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As a master's student, you have some of the best access to advice to help you personally as anyone in the world.

You should have a lot of professors with patents that would be willing to not only evaluate the value to the industry, but walk you through the process. I would speak with them first.

Otherwise, note that software isn't patentable, but you don't want it to necessarily disclose a "method" of doing something, which is patentable. This would count as public disclosure.

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  • "software isn't patentable" - that's not quite accurate. While you would typically not have a claim directed at "software" per se (which is perhaps what you meant), software is as patentable as anything else.
    – Maca
    Jan 8, 2017 at 11:34
  • I have to agree that saying "software isn't patentable" is wrong. We patent a lot of software for our clients, even in Europe, where software is per se not patentable.
    – Louis Iselin
    May 30, 2017 at 18:20
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I urge extreme caution, as I was urged to be extremely cautious by numerous patent attorneys regarding eligibility related to a novel algorithm which has the potential for widespread use.

Most critically:

Essentially this means that disclosure [prior to filing could render the Intellectual Property ineligible for patent in the US. (I was advised that this also includes formally copyrighting the description of the mechanics.)

Although there is some leniency in the US and some regions per a grace period from the time initial disclosure by the inventor, it nevertheless opens up an avenue of attack should a grant be subsequently challenged, regardless of the merit of that tactic. (i.e. it's expensive to defend a challenge.)

You can find a clear breakdown of the rules and exceptions in the US statutes in regard to disclosure here.

Because algorithmic patents have a greater degree of uncertainty in the current environment, partially related to the definition of "abstract", which is far from clear, algorithm companies are seeming to prefer to protect IP though trade secrets as opposed to patents.

Here is an interesting article related to DeepMind which should be illustrative of the issue, and of interest to all algorithm designers.

This also a very useful series of articles by Eugene Quinn, regarding the history of software and algorithmic patents in the United States.

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    Simply disclosing your invention does NOT necessarily terminate all potential patent rights (in the USA), but it may start the clock on the limited grace period (in the USPTO) for filing an application. The rules in other countries vary as to the "strict novelty"of your invention upon filing, i.e., it was not previously disclosed. This makes it a bit harder for others to obtain patents on YOUR invention, due to your premature disclosure. In the USA it would be a felony to claim what is not yours.
    – Upnorth
    Jul 28, 2017 at 20:48
  • @Upnorth Thanks for making that point! You are correct about the rules for disclosure in the US being more lenient, as opposed to the EU, which is very strict. I'm going to amend the answer to clarify.
    – DukeZhou
    Jul 28, 2017 at 20:52

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