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
