Protect your potential to patent: beware of accidental self-disclosures

To be eligible for patent protection, an invention must be novel and inventive over the prior art. Prior art includes any information made publicly available before the priority date of a patent application.

Importantly, any kind of disclosure may result in relevant information reaching the public domain. Disclosures include:

• written disclosures, including physical and digital publications
• oral disclosures, including in-person and online presentations
• actual display or use of an invention in public.

Further, the disclosure can be made by anyone, including your own disclosures, termed ‘self-disclosures’.

Ideally, you should avoid any disclosure of your invention before filing for patent protection. Self-disclosures will become prior art against you – so prematurely disclosing your invention will jeopardise a future patent position.

To avoid finding yourself in this situation, below we delve into examples of self-disclosures to have on your radar.

Articles and presentations

The most common example of a self-disclosure is the publication of a research article or technical paper. Publishing articles provides a vital avenue for disseminating research findings. For researchers, there is often a drive to publish research quickly to avoid being ‘scooped’ and to support career progression. However, given the level of detail required to be disclosed in such publications, research articles can become problematic prior art for subsequent patent applications covering the disclosed research. Therefore, if there is commercial interest in the research, it is ideal to file for patent protection before publication. This may mean delaying publication if more time is needed.

Similarly, oral and poster presentations delivered at seminars and conferences constitute examples of self-disclosures. Presentation abstracts are published and will constitute prior art, so it is important to avoid disclosing key invention details in abstracts. Likewise, posters, slides and presentations are increasingly becoming available online, particularly with the growing popularity of webinars and virtual conferences. Once again, if the research holds commercial potential, patent protection should be sought before the research is presented.

E-prints

A related avenue for self-disclosures is research article preprints and post prints (collectively e-prints), which are published through open-access platforms. Being publicly accessible, these e-prints constitute prior art against future patent applications.

Preprints (author’s original manuscripts) are preliminary versions of manuscripts that are publicly shared before undergoing peer review. There are many preprint server repositories, including general repositories such as arXiv, and field-specific repositories such as bioRxiv, ChemRxiv and medRxiv. Sharing research through preprints allows for early sharing of research and feedback from peers. However, given preprints can be cited as prior art, it is important to weigh the benefits of sharing research early with the impact of publication on a future patent position.

On the other hand, post prints (author’s accepted manuscripts) are manuscripts that have been peer reviewed and accepted for publication but have not been typeset and formatted by the publisher. Some journals will publish post prints before the release of the final version by the publisher. It is therefore advisable to review the publisher’s policy on post prints to avoid any inadvertent ‘early’ publication.

Thesis publications

University Masters and PhD candidates are typically required to submit a thesis relating to their research. Where there is interest to patent the research, a patent application should be filed before the thesis is published. If more time is required to file a patent application, most universities have an option to embargo a thesis, thus delaying its publication.

But beware. Even if a thesis is embargoed, details including the thesis title and abstract will be published. We recommend minimising published details and avoiding disclosing key details of your invention.

Since embargos are usually temporary, it is also critical to keep track of the embargo expiry date and request extensions if needed, to avoid any unintentional publication of the thesis before a patent application is filed.

Grant applications

Grants can be a valuable source of research funding. Applying for a grant will typically involve disclosing aspects of your research to the funding body.

Any non-confidential disclosures during the grant application process will constitute prior art. Thus, when applying for grant applications, it is best to investigate whether the application will be treated confidentially and to check what details will be published, especially should your application be successful.

Product displays at trade shows and exhibitions

Industry trade shows and exhibits often serve as prime platforms for companies to launch and showcase their latest products. Exhibitors can display their products and demonstrate product features, benefits, and applications directly to potential customers.

Where there is commercial potential in a product, patent protection should be sought before publicly displaying the product. This is because display of a product constitutes a form of disclosure and can therefore become prior art for subsequent patent applications for that product.

This situation was considered in Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31, in which it was decided that for a disclosure to be novelty-destroying, it must be determined whether an interested third party "was in fact free to examine the product as he or she pleased, or … actually had the opportunity to ascertain the internal workings of the … product".¹

Thus, be mindful of the potential consequences of displaying your product before seeking patent protection. Providing access to your product, or showing, explaining, or providing information regarding key inventive features of the product and how it works, will compromise a future patent position.

Clinical trial publications

There are opportunities to obtain patent protection for clinical stage inventions. Ideally, filing for patent protection should occur before publication of clinical trial to prevent the results from becoming prior art. However, there are other potentially problematic clinical trial publications that are important to bear in mind.

One example is clinical trial protocols. In many jurisdictions including Australia, New Zealand, Europe and the US, clinical trial protocols are required to be registered on publicly accessible databases. Consequently, the potential exists for the protocols to become prior art. Notably, an Australian Full Federal Court decision² highlighted this risk, where the claims of a patent were found to lack novelty in view of a reasoned but unproven hypothesis disclosed in a clinical trial protocol.

Another example is patient consent forms, which include clinical trial details to enable informed consent. Patient consent forms are not always considered confidential, and therefore may become prior art. This was demonstrated in an Australian Federal Court decision³, where a patient consent form was deemed publicly available - and thus prior art - because it indicated that prospective patients could discuss the details of the trial with anyone before giving consent.

Given the risks posed by clinical trial publications, it is essential to carefully consider the timing of filing patent applications for clinical stage inventions. A balance must be struck between disclosing required information and ensuring that such disclosures do not threaten a future patent position.

For further exploration of clinical trials and patenting considerations, please see Clinical trials: a risky step on the patenting path.

Media releases and news articles

Publicly listed companies often issue official media releases for a variety of purposes – including to announce research advances and results. News articles are also a popular way for companies, as well as researchers and research institutes, to share new research breakthroughs.

Given these communications are public disclosures, it is important to exercise caution and avoid disclosing any information that could jeopardise future patent protection. It is best practice to have your patent attorney review any media releases or news articles prior to publications, to avoid any potentially problematic self-disclosures.

Social media

It is becoming increasingly popular for researchers, universities, and companies to promote their own research on social media platforms, so as to attract more interest, engagement and investment. This can include sharing research projects, advertising new positions, and communicating results.

Because they are publicly available, social media posts may become prior. Therefore, it is important to carefully consider what is published on these platforms. If you are unsure whether your post can be publicly shared, it is best to first check with your patent attorney before posting.

Speculation

In research publications and media releases, it is not unusual to include speculative statements, including extrapolation of research results and discussion of potential future developments.

But a word of caution. For an invention to be patentable, it must be not only novel, but also inventive (not obvious) compared to the prior art.

This is where speculative statements can be dangerous – they may render a future patent position as being ‘obvious’, and therefore not patentable. An Australian Full Federal Court decision⁴ underscored this risk, where an invention was deemed obvious in view of a speculative statement made in a report on an observational study. Thus, it is important to be mindful of the risks of speculation when sharing research and consider whether the benefits of speculative statements outweigh the potential implications for future patent rights.

Further insights into the dangers of speculation are explored in Speculation - a lurking danger in academic publication.

Final thoughts

Patenting does not necessarily mean you are prohibited from disclosing your invention altogether. However, it is wise to think carefully about the timing and extent of what you disclose; self-disclosures can indeed impact a future patent position and, consequently, the ability to commercialise your invention.

If you are unsure about whether and what you can publicly disclose, before a patent application has been filed, be sure to seek guidance from your patent attorney before making any disclosures.

Stay tuned for our next article, where we’ll explore the actions you can take when a self-disclosure has been made.