During the COVID-19 period, information sharing methods contributed to a growing bank of the prior art and increased the threat of self-disclosure for individuals seeking patent protection for their inventions.
In most countries, novelty and inventive step (non-obviousness) is required for patentability, and they are considered against a background of prior public information disclosed everywhere in the globe (the prior art base) prior to the filing date of a patent application for the invention (the priority date). Any publicly available documents or activities that reveal the claimed invention are included in the prior art basis.
The History of Prior Art: Then and Now
Patent specifications, journal and magazine articles, books, pictures, conference abstracts, and archived webpages are examples of prior art that are frequently mentioned for determining whether a claimed invention is new and non-obvious. Clinical trial material, including relevant theories, might be considered novelty-destroying disclosures. Commercial usage or operation (save for reasonable trial) and spoken disclosures, such as personal correspondence, seminars, and conference presentations, are examples of prior art ‘acts.’
The prior art landscape has changed in recent times, mainly as a result of COVID-19, with the advent of new types of disclosures (including self-disclosures) that inventors, particularly those working in academic environments, might easily overlook.
Researchers are increasingly utilizing pre-prints – publicly accessible academic articles that have not yet been peer-reviewed – to speed up dissemination and open debate of their results, when formerly scientific papers took months (or years) to publish. Although it was first used by physicists over 30 years ago, it took longer for other areas, particularly the biological sciences, to catch up. Despite the fact that pre-prints were small during the ZIKA and Ebola epidemics, the pre-print phenomena has surged in the aftermath of COVID-19. Pre-prints appear to be here to stay, according to early indications, as they gain traction and acceptance among scientists, funding agencies, policymakers, and journalists.
Scientific meetings and seminars, the fundamental lifeblood of academia and research, quickly shifted online when COVID-19 brought life to a standstill. These events’ technical platforms have only gotten more complex and interactive.
Participants are encouraged to upload their posters (sometimes with a pre-recorded spiel) openly on Twitter with conference hashtags for easy searching, and it is not uncommon to see substantial debates taking place on social media platforms in place of poster sessions. Presentations are now recorded and made available online, either immediately or after a brief restriction.
The information included in conference posters and presentation slides might not have been sufficiently comprehensive to qualify as novelty-destroying prior art for a claim to an invention in a later-filed patent application. However, when combined with other disclosures of the invention, such as in an accompanying oral presentation, this might be enough to destroy the invention’s novelty.
At its foundation, anything might be considered prior art. Some commercial databases currently include pre-print collections, and it remains to be seen if and when recorded academic lectures will follow suit. Regardless of the possibility for problematic prior art, it’s impossible to see patent examiners searching through millions of ephemeral social media posts. A third party willing to dispute a granted patent with a much narrower scope of inquiry, on the other hand, maybe highly motivated to search for any relevant prior art and leave no stone unturned in an attempt to disprove a competitor’s patent claim.
The scientific community’s accelerated and open dissemination of information is, of course, commendable and essential to advancement and development. This has, however, increased the number of risks for individuals seeking patent protection for their inventions. It is more critical than ever for inventors to strike a practical balance between preserving their intellectual property and releasing knowledge publicly in an ethical and timely manner. Patentees, particularly those in academic contexts, should be made aware of the increased danger of self-disclosure and how to avoid them.
In certain circumstances, using code names or anonymized details in presentations might help prevent essential features of the invention from being revealed before a patent application is submitted. Countries such as Australia, Japan, South Korea, and the United States have limited grace periods for late filings if a prior disclosure has happened or is inevitable, often within 12 months of the date of self-disclosure.
As usual, if you have any concerns that a certain activity may constitute a problematic disclosure, we recommend consulting a patent attorney and, if possible, filing a patent application for the invention before making any information of the invention public.
You can find the list of international IP Firms here.