A technology transfer office spends its life answering questions about time. What did we bring into this collaboration. When did the researcher have the result. Whether anything reached the public before the application went in.
The answers are usually assembled years afterwards from schedules written from memory, notebooks held by a departed postdoc, and a conference programme somebody still has. That is a weak position to negotiate from and a weaker one to litigate from.
| Question | Who asks it | What answers it now |
|---|---|---|
| What did we bring into the project? | The partner, when exploitation is negotiated | A background schedule written from memory at project start |
| When did the researcher have this? | Patent counsel, and any inventorship dispute | The researcher’s own files and notebooks |
| Was anything public before we filed? | An examiner, or an opponent | Reconstructed from conference programmes years later |
| What did we disclose to the partner? | The partner, usually in disagreement | Two sent folders, each held by a party to the argument |
| Who contributed which part? | A joint ownership dispute | Recollection, once relations have already broken down |
Every entry in the third column was produced by the institution itself, after the question arose, by people with an interest in the answer. That is the common weakness, and it is the only one a dated record addresses.
The distinction between what a party brought into a project and what the project produced runs through the UK Intellectual Property Office's Lambert Toolkit and through research funding agreements generally. It decides who may exploit what, and it is settled in a schedule agreed at the outset.
That schedule is almost always a list of descriptions, compiled from what the research team recalls holding. It is adequate while everyone agrees. It becomes the institution's primary evidence at the point a partner argues that a technique the university considers its own was developed inside the project, and at that point it is a document the university wrote about itself.
Depositing each item of background at the point the schedule is agreed changes what the schedule refers to. Instead of describing material, it identifies it by cryptographic fingerprint, with a certificate showing that document existed in that form on that date. The material itself stays inside the institution, because only the fingerprint travels. The same approach applied to agreement schedules generally is set out on NDAs and contracts.
Researchers are measured on publication and technology transfer offices are measured on protected inventions, and the two run on opposing clocks. Under the European Patent Convention anything made available to the public before the filing date forms part of the state of the art, with no general grace period. The exceptions in Article 55 are narrow, and run from the actual filing date rather than the priority date, as the Enlarged Board settled in G 3/98 and G 2/99.
An abstract accepted for a conference, a poster, a preprint, a deposited thesis. Any of them can end the possibility of a European patent on that subject matter, and none of them feels to the researcher like a disclosure event. The United States is more forgiving, allowing a year for the inventor's own disclosure under 35 U.S.C. 102(b)(1), but that exception has to be claimed and the disclosure has to be shown to be yours and dated.
A record made before each disclosure gives the office a fixed point to argue from rather than a reconstruction. What the register does and does not capture around a filing is set out on the dates a patent filing does not record, and where the decision is to disclose deliberately rather than file, on defensive publication.
Material transfer, confidential disclosure and evaluation arrangements all end in something being handed over. The institution's record of what was handed over is generally an attachment in a sent folder, held by one of the two parties who will later disagree about it.
Sharing from a vault records each recipient and each view against a timestamp, and access can be withdrawn when an evaluation period ends. Each recipient can be issued an individually watermarked copy, so material appearing outside the arrangement can be traced to the person it was issued to. For a spin-out raising money on the back of licensed technology, the same records answer an investor's diligence questions about provenance.
One automated sequence, each step taking the output of the one before it. The file is hashed with SHA-256. That hash is timestamped under RFC 3161 by an accredited trust service provider. The timestamped hash is anchored to the Bitcoin blockchain through OpenTimestamps. Only the hash travels, so unpublished research never leaves the institution and recording it is not itself a disclosure.
eIDAS qualification is a separate option on top. With it the timestamp carries the presumption under Article 41(2) that the date and time are accurate and the data intact, shifting the burden onto whoever disputes it. A blockchain anchor alone does not carry that presumption, a distinction set out in blockchain timestamps compared with qualified timestamps.
Every certificate can be checked without us, which matters when the party reading it is a commercial partner in dispute with you. Our timestamp validator is open source and checks any provider's timestamp, not only ours, and independent verification sets out each check in full.
Talk to us about institutional use →Background IP is what a party already held before a collaboration began, as distinct from the results the project generates. The distinction runs through the UK Intellectual Property Office’s Lambert Toolkit and through research funding agreements generally, and it decides who can exploit what afterwards. The difficulty is that background is usually listed in a schedule drawn up at project start, from what people remember holding. Two years later, when the partner asserts that a technique was developed inside the project, the schedule is the institution’s evidence and it was written from recollection.
By recording the material itself at the point the schedule is agreed, rather than only describing it. Each item listed as background is deposited, producing a certificate showing that a document with that exact fingerprint existed on that date. The schedule then refers to identified material rather than to a description of it, and a later argument about whether something was brought in or generated has a dated answer. The documents stay private throughout, because only their cryptographic fingerprints leave the institution.
In Europe the position is unforgiving. The European Patent Convention operates absolute novelty, so anything made available to the public before the filing date forms part of the state of the art, and there is no general grace period. The exceptions in Article 55 cover evident abuse and display at certain official international exhibitions, and run from the actual filing date rather than the priority date, which the Enlarged Board settled in G 3/98 and G 2/99. A conference abstract, a poster, a preprint or a deposited thesis can end the possibility of a European patent on that subject matter.
Yes, and it has to be claimed rather than assumed. Under 35 U.S.C. 102(b)(1) a disclosure made a year or less before the effective filing date is not prior art against the inventor where the disclosure came from the inventor, or from someone who obtained the subject matter from the inventor. Relying on it means establishing that the disclosure was yours and when it happened, which for a multi-author paper with several institutional affiliations is not always simple. The grace period is a repair mechanism, not a plan.
Enough to fix what the researcher had at the point of disclosure, not merely that a disclosure form was submitted. The form itself, the supporting data, the figures, the draft description of the method. Recording these when the disclosure is filed produces a dated record of the substance rather than of the administrative act. That matters in inventorship disputes, in derivation proceedings, and whenever a second institution asserts that its own researcher reached the same result first.
It reduces the number of things in dispute. The Lambert Working Group recommends avoiding joint ownership where possible, precisely because it is difficult to administer and difficult to unwind. Where it cannot be avoided, the arguments that follow are about who contributed what and when. Dated records of each party’s contributions, made as the work proceeds, replace a reconstruction assembled from lab notebooks and email once relations have deteriorated.
Inventorship, ownership, or whether anything is patentable. Those are questions for patent counsel and, if it comes to it, for a court, decided on employment terms, funding conditions, assignment documents and the substance of the work. A record establishes that a specific document existed in a specific form on a specific date and has not changed since. It removes the argument about when, which is the argument institutions are least equipped to win.
That is a commercial and legal judgement for the institution and its patent attorney, and it turns on the strength of the invention, the cost of prosecution and the researcher’s career interests. What is worth understanding is that the decision is one-way in one direction only: publication forecloses European patenting, while filing does not foreclose publication. Where the decision is to place material in the public domain deliberately, our page on defensive publication sets out what makes such a disclosure effective and why its date is the part that gets attacked.
In the EU a qualified electronic timestamp carries a presumption under Article 41(2) of Regulation 910/2014 that the date and time are accurate and the data intact. The presumption is rebuttable, shifting the burden to the party disputing it. It applies across all EU member states, and the EEA states recognise qualified timestamps through the EEA Agreement. The UK retains an equivalent framework including the presumption, and recognition between the two regimes now runs one way: UK law continues to recognise EU qualified trust service providers, while the EU no longer recognises UK-registered ones. The United States has no equivalent statutory presumption.
This page gives general information about evidence in research commercialisation. It is not legal advice, and it is not a recommendation on any filing or publication decision. For a specific matter, consult a qualified patent attorney.