Australia: Prior Art In The Age Of COVID

Information sharing practices during the COVID-19 era are contributing to a growing bank of prior art and, further, are increasing the risk of self-disclosure for those wishing to pursue patent protection for their inventions.

In most jurisdictions, novelty and inventive step (non-obviousness) are requirements for patentability, and are assessed against the background of previous public disclosures made anywhere in the world (the prior art base) before the date on which a patent application for the invention was first filed (the priority date). The prior art base includes any publicly available documents or acts that disclose the claimed invention.

Prior Art: Then and now

The types of prior art that are commonly cited for the purposes of assessing whether a claimed invention is novel and non-obvious include patent specifications, journal and magazine articles, books, photos, conference abstracts and archived webpages. Recently, Australian Courts have indicated that clinical trial information, including pertinent hypotheses, can also be considered novelty-destroying disclosures¹. Prior art 'acts' include commercial use or activity (excluding for reasonable trial) and oral disclosures, such as personal communications, seminars and conference presentations.

The prior art landscape has changed in recent times, largely in response to COVID-19, with the emergence of new types of disclosures (including self-disclosures), which inventors, especially those operating in academic ecosystems, can often overlook.

Pre-prints: worth the paper they are not printed on

Where once scientific papers took months (or years) for publication, researchers are increasingly using pre-prints - publicly accessible scholarly manuscripts that have not yet been peer-reviewed - to accelerate dissemination and open discussion of their findings. First adopted by physicists some 30 years ago, uptake in other fields, notably in the life sciences, was slower. Although pre-prints remained modest throughout the ZIKA and Ebola outbreaks, the pre-print phenomenon has exploded in the wake of COVID-19². Early indications suggest pre-prints are here to stay, as they gain traction and acceptance amongst the scientific community, funding agencies, policymakers and journalists.

Examples of pre-print repositories include biorxiv (operated by Cold Spring Harbour Laboratory for the biological sciences), chemRxiv (operated by American Chemical Society for chemistry) and arXiv (operated by Cornell University for the fields of physics, mathematics, computer science and engineering). These pre-print repositories are typically searchable. Once a manuscript is posted, it cannot be removed and becomes part of the public record. While a version of a pre-print may eventually publish following peer review³, for patentees, this is immaterial if details of the invention had already been disclosed in the pre-print (or revised versions thereof) months earlier.

For the record.

When COVID-19 brought life all but to a standstill, scientific meetings and seminars, the foundational lifeblood of academia and research, swiftly moved online. The technological platforms hosting these events have only became more sophisticated and interactive.

In lieu of poster sessions, participants are encouraged to post their posters (occasionally, with a pre-recorded spiel) publicly on Twitter with conference hashtags for ease of searching, and it is not uncommon to see substantive discussions occurring on social media platforms. Presentations are no longer merely broadcast live, but recorded and made available online, either immediately or after a brief embargo. For example, the 2020 American Society of Human Genetics Meeting sessions were made available online, on-demand for 12 months.

Cassyni is a new service that organises, publishes and indexes recorded academic seminars ranging from the life sciences, physical sciences, computer science and social sciences. The brainchild of previous founders of Kopernio, Publons and Mendeley (academic citation and indexing start-ups that were eventually acquired by Clarivate Analytics and Elsevier), Cassyni was only launched this year, but uptake by the scientific community has been swift and enthusiastic. Cassyni already counts several world-class research institutions as contributors and participants; University of Cambridge, University of Oxford, UCL, Max Planck Institutes, Stanford and MIT to name a few. Leading journals (e.g. Journal of Computational Physics) have taken to hosting seminars and author-led discussions on the platform. Relevantly, these seminar recordings are publicly available, and searchable by topic, speaker, abstract, institution and dates.

Prior to indexing services such as Cassyni, the information presented in conference posters and presentation slides may not have been sufficiently detailed enough to constitute novelty-destroying prior art for a claim to an invention in any subsequently filed patent application. However, when coupled with further disclosures of the invention made available in Cassyni, such as in an accompanying oral presentation, this may well be sufficient to destroy novelty.

At the heart of it, anything could be prior art; there is the famous example of a Donald Duck comic strip being cited against a Dutch patent application.⁴ It is not unheard of for YouTube videos to be cited in Examination Reports. Pre-print repositories are already incorporated in some proprietary databases, and it remains to be seen if and when recorded academic seminars will follow suit. It is difficult to imagine patent examiners combing oceans of ephemeral social media posts, no matter the potential for problematic prior art. However, a third party wishing to challenge a granted patent, and with a much narrower scope of enquiry, may be suitably motivated to leave no stone unturned and look to any source of relevant prior art in a bid to invalidate a competitor's patent position. Indexing services such as Cassyni would seem to make that task easier.

Takeaways

The accelerated and open dissemination of information by the scientific community is, of course, laudable and underpins scientific and technological progress. However, this has also created more pitfalls for those wishing to pursue patent protection for their inventions. Now, more so than ever, it is important for innovators to find a practical balance between protecting their intellectual property and the ethical timely sharing of information publicly. Patentees, in particular those in academic settings, should be made aware of these new self-disclosure risks and how to navigate them.

In some cases, use of code names or anonymised details in presentations can assist to avoid disclosing key aspects of the invention before a patent application for the invention has been filed. Where a prior disclosure has occurred or is unavoidable, countries like Australia, Japan, South Korea and the US offer limited grace periods for late filings, typically within 12 months of the date of self-disclosure.

As always, we recommend consulting a patent attorney if there is any concern that a particular action may constitute a problematic disclosure and, when possible, that a patent application for the invention is filed before making any details of the invention public.

1. Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd [2020] FCAFC 116.

2. 25% of early COVID-19 literature were pre-prints; see Fraser et al. (2021) PLoS Biol 19(4): e3000959.

3. Fraser et al. (2020) Quantitative Science Studies (2020) 1 (2): 618-638.

4. Dutch application NL6514306.

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