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Under the first-to-file patent system in place in the U.S. and globally, a publication that pre-dates an effective filing date can preclude the patenting of an invention. While outside counsel, in-house counsel, and technical staff are well aware that such potentially novelty-destroying publications should be avoided, if the right questions are not asked, it is possible that scientists may make an inadvertent and unintentional, novelty-defeating, public disclosure.
Typically, when scientists present the results of research at a conference or publish the results of the research in a journal, the initial submissions are confidential. They become publicly available only after a peer-review period. Usually, it is possible to predict the publication date and file a patent application before that date. However, preemptive filing is not possible when the scientists have agreed to “pre-publication.”
There are many websites acting as repositories of scientific research, on which the research becomes publicly available as soon as the results of the research are posted.[1] These websites are designed to allow researchers to publicly “share early results with colleagues and respond to comments and recommendations for improvement, ahead of formal peer review and publication.”[2] Such websites include, but are not limited to https://www.biorxiv.org/ (pronounced “bio-archive”), https://chemrxiv.org/ (pronounced “chem-archive”), and https://arxiv.org/ (for physics, mathematics, computer science, quantitative biology, quantitative finance, statistics, economics, electrical engineering and systems science). Posting research results on any of these websites may constitute a novelty-destroying disclosure of an invention relying on that research.
Given that, anytime a scientist approaches outside counsel, in-house counsel, or technical staff regarding disclosing research results, it is important to ask where the results of the research were or will be submitted and whether the submissions are confidential. It is also important to ask whether the scientist elected “pre-publication.” It may be advisable to include fields in invention disclosure forms that ask inventors not only about submission dates, but if they elected “pre-publication” on any websites.
[1] For instance, bioRxiv indicates that “[b]y posting preprints on bioRxiv, authors are able to make their findings immediately available to the scientific community and receive feedback on draft manuscripts before they are submitted to journals.” About bioRxiv.