Tech Transfer eNews Blog

Take step to avoid patent-killing ‘pre-print’ disclosures


By David Schwartz
Published: May 5th, 2020

 A detailed article on preventing IP loss from “pre-print” disclosure appears in the April issue of Technology Transfer Tactics. For subscription details, CLICK HERE.  

Careful, albeit enthusiastic, inventors have always been guarded about sharing any aspects of their innovations. They follow rules about public disclosures and publishing, and leverage the time-tested patent protection process. But in the academic world, where publishing is paramount to tenure and career advancement, there is always the risk that a public disclosure will eliminate the innovator’s — and their university’s — ability to protect an invention.

As TTOs know, the publishing date is significant. So is understanding what publishing means in the 21st century. And with the advent of automatic or “pre-print” publishing being used by some online platforms and publishers, the risk of public disclosure — and loss of patent rights — is trickier than ever.

Felicia Metz, JD, associate director of the Office of Technology at the University of Maryland, reminds us that “if you publish first and go later to the Patent Office, that will be prior art against your application. You get that one-year grace period for an inventor’s own publication, but that’s in the U.S. The risk is that public disclosure activities within one year of a patent filing can compromise your patent rights or you can lose them altogether.” Outside the U.S., once an invention has been publicly disclosed, inventors have minimal or even zero shot at patent protection.

As with other aspects of our lives, the Internet seems to offer as many wonderous never-before-contemplated advantages as it does potential ways to get into trouble. Easily granting public access to just about anything, including a patentable idea, is just one of them. One thing the web has changed is that a description of an invention doesn’t need to appear in a “publicly distributed paper journal” to constitute a “printed publication” for the purposes of the Patent Act. Not all academic inventors get this, putting themselves and their universities at risk in terms of patent protection. The “pre-print” trend makes this even harder to police for TTOs.

Companies, universities, non-profits, government agencies, societies, and associations have created myriad free distribution services that provide open-access file-sharing archives comprising many millions of scholarly articles in virtually all fields of science and technology.

Inventors often use these services to post “pre-prints” of their manuscripts, not realizing they are “publishing” in the eyes of patent offices.

Unfortunately, as we detailed in the January 2020 issue of Technology Transfer Tactics, a pair of inventors at Albert Einstein College of Medicine and the school itself paid a steep price for not knowing online access was considered publishing. They drafted a manuscript about an exciting and potentially lucrative new genetic testing technology, which was accepted for publication in the journal Clinical Genetics. A preview of the article appeared online in December 2011.

What the inventors called a “final” version was published electronically in January 2012 and in print in March 2012. The inventors told their attorneys about the print publication, but did not mention — and say the law firm was negligent for not asking them — about the earlier online publication dates. Because the patent application was filed more than a year after the appearance of the first online version of the article, the Patent Office rejected the patent application. The result, they said, was the loss of potentially tens of millions of dollars and a pending lawsuit against the firm that handled its application.

More recently, according to a source who requested anonymity, a group of prolific inventors actively posted their pre-prints to one of the file-sharing sites and, while they did not lose patent protection in the U.S., they did lose international rights.

It’s critically important that academic inventors keep their innovation offices in the loop no matter what form of publishing is used, and it’s critical that TTOs educate researchers about the potential perils of pre-print disclosures.

As Metz noted, “we’re not here to stop them from publishing, but to get research out and to file patent applications.” Universities need to face this communications challenge so inventors are telling TTOs or venture development teams what they are doing — not to hinder their work but to protect it and share it, she stresses. Metz says best practices include holding regular internal talks with inventors about intellectual property, speaking to classes, and holding faculty workshops.

Posted under: Tech Transfer e-News

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