Art prior to the COVID era
Information sharing practices during the COVID-19 era contribute to a growing bank of prior art and, moreover, increase the risk of self-disclosure for those who wish to obtain patent protection for their inventions.
In most jurisdictions, novelty and inventive step (non-obviousness) are conditions for patentability and are assessed on the basis of prior public disclosures made anywhere in the world (the basis of prior art) before the date on which a patent application for the invention was first filed (the priority date). The basis of the prior art includes all documents or acts available to the public which disclose the claimed invention.
Prior art: yesterday and today
Commonly cited types of prior art for the purpose of assessing whether a claimed invention is new and unobvious include patent specifications, journal and magazine articles, books, photos, conference abstracts, and archived web pages. . Recently, Australian courts have indicated that information about clinical trials, including relevant assumptions, can also be considered novelty-destructive disclosures.. Prior art ‘acts’ include use or commercial activity (excluding reasonable testing) and oral disclosures, such as personal communications, seminars and conference presentations.
The landscape of the prior art has changed in recent times, largely in response to COVID-19, with the emergence of new types of disclosures (including self-disclosures), which inventors, especially those who operate in university ecosystems, can often ignore.
Pre-prints: worth the paper they are not printed on
Whereas in the past scientific papers took months (or years) to be published, researchers are increasingly using pre-prints – publicly available scholarly manuscripts that have not yet been peer reviewed – to speed up the dissemination and open discussion of their findings. First adopted by physicists about 30 years ago, adoption in other fields, notably in the life sciences, has been slower. Although pre-prints have remained modest throughout the ZIKA and Ebola outbreaks, the pre-print phenomenon has exploded in the wake of COVID-19. Early indications suggest that pre-prints are here to stay, as they gain traction and are accepted by the scientific community, funding agencies, policy makers and journalists.
Examples of preprint repositories include biorxiv (operated by the Cold Spring Harbor Laboratory for the biological sciences), chemRxiv (operated by the American Chemical Society for chemistry), and arXiv (operated by Cornell University for the fields of physics, mathematics, computer science and engineering). These pre-printing repositories are generally searchable. Once a manuscript is posted, it cannot be deleted and becomes part of the public record. While a version of a preprint may possibly be published after peer review, for patentees, it doesn’t matter if the details of the invention had already been disclosed in the pre-print (or revised versions thereof) months earlier.
When COVID-19 virtually ended life, scientific meetings and seminars, the lifeblood of academia and research, quickly moved online. The technological platforms hosting these events have only become more sophisticated and interactive.
Instead of poster sessions, attendees are encouraged to post their posters (sometimes with a prerecorded spiel) publicly on Twitter with conference hashtags for easy research, and it is not uncommon to see substantive discussions. take place on social media platforms. Presentations are no longer simply broadcast live, but recorded and made available online, either immediately or after a brief embargo. For example, the American Society of Human Genetics 2020 meeting sessions have been made available online, on demand for 12 months.
Cassyni is a new service that organizes, publishes and indexes recorded academic seminars ranging from Life Sciences, Physical Sciences, Computer Science and Social Sciences. Stemming from the imaginations of the previous founders of Kopernio, Publons and Mendeley (academic citation and indexing start-ups that were ultimately acquired by Clarivate Analytics and Elsevier), Cassyni was only launched this year, but the adoption by the scientific community has been swift and enthusiastic. Cassyni already has several world-class research institutions as contributors and participants; University of Cambridge, University of Oxford, UCL, Max Planck Institutes, Stanford and MIT to name a few. Leading journals (e.g. Journal of Computational Physics) have started hosting author-led seminars and discussions on the platform. Relevantly, these seminar recordings are accessible to the public and searchable by subject, speaker, summary, institution and dates.
Prior to indexing services such as Cassyni, information presented in conference posters and presentation slides may not have been detailed enough to constitute novelty-destroying prior art for a claim of an invention in an application. patent filed subsequently. However, when combined with other disclosures of the invention made available in Cassyni, such as in an accompanying oral presentation, this may well be sufficient to destroy the novelty.
At the heart of it, anything could be the state of the art; there is the famous example of a comic strip by Donald Duck cited against a Dutch patent application. It’s not uncommon for YouTube videos to be cited in review reports. Pre-print repositories are already incorporated into some proprietary databases, and it remains to be seen if and when recorded academic seminars will follow. It’s hard to imagine patent examiners combing through oceans of ephemeral social media posts, regardless of the potential for problematic anticipation. However, a third party wishing to challenge a granted patent, and with a much narrower field of investigation, may be suitably motivated to neglect nothing and turn to any relevant source of prior art with the aim of invalidating the patent position. ‘a competitor. Indexing services such as Cassyni seem to make this task easier.
Take away food
The accelerated and open dissemination of information by the scientific community is, of course, laudable and underpins scientific and technological progress. However, it has also created more pitfalls for those who wish to obtain patent protection for their inventions. Now more than ever, it is important for innovators to find a practical balance between protecting their intellectual property and sharing information publicly and ethically in a timely manner. Patentees, especially those working in academia, should be made aware of these new risks of self-disclosure and how to deal with them.
In some cases, the use of code names or anonymized details in presentations can help avoid disclosing key aspects of the invention before a patent application for the invention has been filed. Where earlier disclosure has occurred or is unavoidable, countries such as Australia, Japan, South Korea, and the United States offer limited grace periods for late filings, typically within 12 months of the date self-disclosure.
As always, we recommend that you consult a patent attorney if you are concerned that a particular action may constitute a problematic disclosure and, if possible, that a patent application for the invention be filed before making public the details of the invention. ‘invention.