Re: Establishing Priority for Patents

From: J Adrian Pickering <jap_at_ECS.SOTON.AC.UK>
Date: Wed, 14 Feb 2001 11:24:03 +0000

At 09:37 14/02/01 +0000, you wrote:

>Rarely have I seenstatements made with such force and yet be totally wrong.
>The original posting was correct. So long as you get your first filing for
>a patent in before you submit for publication elsewhere, you then have a
>one year grace period for filing anywhere in the world under the
>International Patent Convention.

On what is FILED. Typically, these days it would be the paper itself since
to do anything else such as file something more carefully constructed costs
considerable money and time. Large commercial companies are the only people
likely to be able to afford to get this right.

>This applies to virtually every country
>in the world. So it is PERFECTLY SAFE to show your material to referees,
>post it on the Web, etc. after you have made your first filing and before
>you do foreign filings under the International Convention.

Agreed. However, this was NOT what was suggested in the first part of the
original mailing. This is what was said:

"I suspect that it's not unusual for researchers in the biotechnology field
to submit a manuscript for peer review, and, at the same time, to begin
the process of filing for patent protection. The process of filing for
patent protection can be completed during the time that the manuscript is
being considered for publication (and *isn't* in the public domain yet)."

I repeat, NO. File first (which was then what was finally suggested). More
subtly, what you file (typically the paper or similar) is what you have
priority date on - NOTHING ELSE. And people don't tend to write papers like
patents! (See 'Publish and be damned', Publication after a patent
application - a warning www.btgplc.com)

"File for patent protection -> self-archive a preprint -> submit for peer
review -> publish in a peer-reviewed journal (one that doesn't prohibit
the prior self-archiving of preprints)."

Refereeing, presentation as a poster, talking at a conference etc.
consititutes public disclosure unless there are NDAs in force (unlikely).
Anything so disclosed will not be patentable in any country outside the US.

It is possible to recover patentable material during journal review, but it
is risky. It will ultimately depend on how 'confidential' the reviewing
process is judged to be.

Are we all agreed, therefore, that to protect ones interests in a patent
case FILE FIRST. After that it the material should be regarded in the
public domain.

You have 1yr gracetime to protect your position regards the US. What is
nice about that is by then your IP has been aired and discussed and any US
patent is likely to be pretty sturdy.

Prior to filing you should self-archive, but not clear text since this will
be public disclosure. What you should 'register' is something that is
unambiguously relates to the text i.e. a crypographic hash (as suggested in
www.probity.org). Once the filing is done then you can go clear. The
(sequence of) hashes may help in subsequent priority arguments. If you
still need a bit of time to develop a proper patent then you *might* try to
rely on refereeing as effectively under an NDA and refile something better.

The trouble is that if something is really 'hot' (and this is usually
recognised later) then really 'hot' lawyers will do everything in their
power to undermine a patent case including finding the (semi)public
disclosure instances. Academic insitutions are not in a good position to
defend themselves in such situations and commercial companies don't like
buying/licensing weak patents. However, there is a point of view that we
shouldn't be in that game. We do research for the public good ;-)

Summary: FILE FIRST, and preferably a good stab and the the actual patent.

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