To publish or not to publish (and how this decision may affect your patents)

As a scientist you have probably at some point in your career encountered the situation that a patent attorney has requested you to refrain from publishing an article, or presenting at a conference, on your work on a certain technology. Sometimes this is simply because a patent application has not yet been filed on this technology and thus publishing an article, or speaking at a conference, which discloses it would basically destroy the chances of getting a patent granted on said technology in a lot of countries (some countries have a "grace period" for this but that is a whole other topic to write an article on). However, in other cases it is perhaps not so clear-cut as to why the patent attorney asked you to not publish.

Take for instance the situation in which a first patent application (priority application) has in fact already been filed for the technology, but the patent attorney still tells you that, if possible, it would be better to wait for a full year after the filing date of said application to publicly disclose anything. Now you may wonder: is it really necessary to wait a whole year when a patent application has already been filed?

In most cases the answer is: yes, it is better to wait. Let me explain why.

To be able to answer this question a bit of short introduction into how the patent system works is warranted. You may have just wondered what this "priority application" that I just wrote about actually is. The priority application is the first patent application that you file on your technology, but protecting your invention is not the main purpose of this priority application. You see, the priority application mainly serves to set the date the patent offices will use to assess if the technology described in your patent application (i.e. the invention) is eligible for being granted a patent. During the priority year, a full year after the filing date of the priority application, you can make changes and add additional data to your original text to come to what we refer to as the "subsequent" application. Before you file your subsequent application you may also file another priority application that has more details, which can cover any new features you may discover during that year. Then once the priority year is up, counting from the date of the first priority application, the subsequent application is filed which will claim priority from the priority application(s), and that is the patent application that you will actually pursue. The patent offices will then use the date of filing of the priority application(s) (the "priority date(s)") for the subsequent application's assessment of patentability. If there is more than one priority date, the date used to assess the features of the subsequent application will be the date of the priority application that was the first to disclose said features. In most cases the priority application is dropped before it is published and will simply have served the purpose of setting the relevant date (priority date) for the subsequent application, which is why the subsequent application is the one that will actually protect your invention.

So what is the problem when you publish in between the first priority date and the filing of the subsequent application?

To answer this question I will refer you to probably one of the most famous recent cases of this going wrong: CRISPR-Cas (gene editing technology). You may have heard that a whole bunch of lawsuits have been happening over the past years concerning the CRISPR-Cas patents (and they seem nowhere near finished) about a lot of different issues. There have been many disputes over who invented what and who has the rights to it, but even outside of the lawsuits there have been issues with this patent portfolio.

One particular issue in Europe did not make it to the lawsuits, because it came up during the appeal of a decision made during opposition proceedings (opposition being proceedings after a patent is granted in which competitors can try to get the patent invalidated), at the European Patent Office (EPO).

In these appeal proceedings it came down to a feature of DNA molecules called “protospacer adjacent motifs,” or PAMs. These PAMs act like a sort of guide telling the CRISPR where to cut and where not to cut the genes. A pretty important feature of the technology if you ask me, but they were not described in the first priority application disclosing the CRISPR-Cas technology. Then an article was published by the inventors during the priority year describing the technology, which did mention the use of PAMs. Only after publication of that article a second priority application was filed that also disclosed the PAMs as a feature.

You can probably already have an inkling of where the issue will lie: the EPO ruled in the appeal proceedings that the first priority date was invalid because of the missing PAMs, which in turn meant that the article published after the first priority date but before the second priority date suddenly became a document relevant to the assessment of the patentability of the patents (there was 2 patents involved).

In this case the inventors may have assumed that all the necessary features had been disclosed in the first priority application and that said application being filed would provide the necessary safety net to be able to publish an article, but since the published article disclosed the technology in full and had a date earlier than the second priority date, the EPO stated in a preliminary opinion (not yet an official decision) their intention to revoke the patents concerned. As a result, the inventors actually voluntarily withdrew the patents, most likely to prevent publication of the official decision. Now that these two key patents are no longer active in Europe, a lot will change in the European market for the CRISPR-Cas technology, since a lot of companies may suddenly find themselves able to market their own products, but the full extent of the consequences is yet to be seen. In any case it was a major blow to Berkeley (the owner of the 2 patents) to lose these patents.

I do not know whether the patent attorney(s) involved advised them against publishing an article before the end of the priority year, but I know that I most certainly would have if I had been in their shoes. CRISPR-Cas was such a groundbreaking technology when it was first discovered that I can understand the eagerness to publish on it, but on the other hand it was also such a pivotal patent portfolio capturing that technology that one small mistake (or omission) could have major consequences in the future, as is evidenced by the current situation.

Even if publication could not be delayed due to other factors, such as obtaining funding for research, the patent attorney(s) should have read the article before it was published and noticed that these PAMs had not been described in the original priority application, and should then immediately have filed a second priority application before the article was approved for publication. Why this was not done I do not know nor understand, maybe the publication was in fact not checked by a patent attorney before submission, but it for sure will have been an expensive mistake.

So. Moral of the story: if possible, wait to publicly disclose anything until after the priority year of your (first) priority application is over to save yourself a whole lot of misery, and if you really can't... at least make sure to have a patent attorney (double)check together with you what you want to disclose to see if a second priority application needs to be filed first.

Need advice on these kinds of matters? Reach out to me via LinkedIn or send an email to [email protected] and I will be happy to set up a free initial meeting to discuss any questions you may have related to patents (or IP in general).