Establishing Priority for Patents

From: J Adrian Pickering <jap_at_ecs.soton.ac.uk>
Date: Tue, 13 Feb 2001 20:04:45 +0000

On Sun, 11 Feb 2001, Jim Till wrote:

> >[sh] Patented findings are of course non-give-away. Authors who wish to
> >[sh] protect their priority will not want to submit their unpatented
> >{sh] findings even to the referees of refereed journals, let alone to
> >[sh] have them published, until and unless they are sure the findings
> >[sh] have patent protection.
> >
> >[sh] So they simply don't submit or publish them, of course! That's not
> >[sh] the concern of the self-archiving initiative, which is dedicated to
> >[sh] freeing from needless access barriers those papers that the author
> >[sh] DOES wish to make public. Papers that the author has reason NOT to
> >[sh] make public are simply not relevant.

> jt> I suspect that it's not unusual for researchers in the
> jt> biotechnology field to submit a manuscript for peer review, and,
> jt> at the same time, to begin the process of filing for patent
> jt> protection.

NO. If they do this they blow away any protection available elsewhere else
in the world. Only the US has the concept of 1yr gracetime. If they want
other patents they must not disclose ANYTHING until the patent is filed in
participating other countries (where filing priority dates are shared).

That includes sending it to editors - that consititutes public disclosure
and blows the case.

> jt> The process of filing for patent protection can be completed
> jt> during the time that the manuscript is being considered for
> jt> publication (and *isn't* in the public domain yet).

NO. Unless you have a non-disclosure agreement that is watertight with
everyone who touches the paper there will be a problem. Therefore, this is
not practical. Further, you are sending the paper to be read by JUST the
people who may know how to exploit the knowledge.

> jt> for patent protection -> self-archive a preprint

Yes. You must file beforehand. You should also secure your data leading up
to the filing also (in case of 'diligence' challenges). Self-archiving a
preprint could be done provided it is encrypted. However, this is not
necessary. File the *hash* of the preprint only. Then, there there is
absolutely NO possibility of disclosure whatsoever.

See www.probity.org for the principles.

RSA lost their ability to patent public key encryption outside the US just
because they forgot to follow the rules above. That was rather a big mistake!

The European patent system is seriously considering a gracetime model
similar to the US, but it is going to take a very long time to happen, if
at all.

Adrian Pickering/
Electronics and Computer Science
University of Southampton
Received on Wed Jan 03 2001 - 19:17:43 GMT