Is there a ticking prior art time bomb hidden in your patent portfolio? Prior art hiding in plain sight may spell doom for patent validity.

“Publish or perish” is the Sword of Damocles hanging over the research scientist: publish frequently or lose your funding, academic position, and reputation. However, public disclosures can destroy intellectual property rights related to the work. Scientists and their attorneys need to strike a delicate balance between competing interests. The balance between publishing and protecting is relatively straightforward if there is clear communication regarding when information will be publicly disclosed.

...public disclosures can destroy intellectual property rights related to the work.

Clear communication in the information age, ironically, is difficult. In prehistoric days before the internet, accurate information regarding a date certain for publication was readily available from publishers and meeting organizers. With this information in hand, patent attorneys could plan to prepare applications prior to public disclosures of the invention.

The “free for all” of information distribution online led to a habit of early release of information. Now, abstracts are published early — often without notice. Open access journals publish articles much more quickly than before. Meeting abstracts are often published prior to the date of a poster’s presentation or lecture. Patent practitioners adapted to the brave new world, asking inventors much more detailed questions regarding publication dates, and building in additional time to file patent applications early.

Enter the preprint server.

A “preprint” has been defined as “a complete scientific manuscript. . .that is uploaded by the authors to a public server without formal review.” Examples of preprint servers include bioRxiv and CogPrints. Other platforms include the start up Academia.edu which adds 17,554,942 papers per month to their database and provides a social network platform for academics to review and comment on research.

These platforms all offer greater distribution of academic research to other scientists and the public. But they also represent a potential ticking time bomb for patent portfolios and a potential rich source of “prior art” which can be used to invalidate patents.

Investors conducting due diligence of patent portfolios should consider the following:

• Ask for the dates of possible early disclosures including journal abstracts, meeting abstracts, posters, discussions in online forums.
• Ask for detailed information regarding any submissions to preprint servers, Academia.edu or any similar online service.
• Add preprint servers to the list of searching tools when evaluating validity.
• Check to see if any preprints identified above were also disclosed to the U.S. Patent & Trademark during patent prosecution as part of the inventor/applicant’s duty of disclosure.

As avenues for digital distribution multiply, pitfalls for preserving intellectual property rights also multiply. Keeping these tips in mind will help reduce the risk of inadvertent disclosure and loss of rights.

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[Jeremy A. Cubert is a partner at VLP Law Group and is a member of the firm’s Intellectual Property practice group. He writes about strategies to simplify the way inventors and investors evaluate and protect biotechnology and pharmaceutical inventions.]