Internet Communications May Jeopardize Valuable Patent Rights
Introduction
To qualify for patent protection, an invention must display certain qualities; it must be proper subject matter; it must display invention, or a flash of creative genius; it must be novel, that is to say, no one else has presented the same idea to the public; and it must be useful. The required novelty and inventive ingenuity, or obviousness, are assessed based on the prior art disclosures at the relevant date. The relevant date is generally the date of filing of the priority application, or first filed application.
It is important to keep in mind that, in assessing novelty and non-obviousness, it is not only public disclosures by third parties which impact on the patentability of an invention, as an inventor's own public disclosure can be cited against him as prior art. In many countries, notably the European countries, any public disclosure by an inventor before the first patent application is filed may prevent the inventor from obtaining valid patents in these countries. Canada and the United States separately provide a one year grace period for an inventor's own public disclosure before filing of the application.
For those scientists interested in preserving patent rights in their technology it is crucial to be aware of all public disclosures which may have the effect of destroying such rights.
Activities on The Internet
Most biotechnology researchers make extensive use of electronic databases that store, for example, polypeptide and nucleic acid sequences, research journals, biotechnology patents and electronic news groups. Scientists routinely exchange findings via the internet, and trade ideas by electronic bulletin board services.
Electronic publications on the internet can be found at gopher sites, archives, web sites and news groups. A new phenomenon on the internet is the bioscience journal that exists only as an electronic publication. One example of this "pure" form of electronic journal is Molecular Vision, a web journal that disseminates research results on molecular and cellular biology of the visual system. Another example of a purely electronic publication is Frontiers in Bioscience. This site provides reviews and research articles in basic and clinical science. Both electronic journals have been designed to offer peer reviewed information.
The internet also disseminates scientific information as on-line versions of traditional paper publications. From the patent law perspective it is critical to note that such electronic publications often distribute information before the release date of the corresponding paper journal. For example, the National Centre for Infectious Diseases releases an electronic copy of Emerging Infectious Diseases before the paper copy is sent to subscribers. The Journal of Molecular Biology On Line offers the table of contents, abstracts and full articles for each issue on the day before the paper edition is mailed to subscribers. Similarly, the table of contents and article summaries are available for Nature at least a day before the journal date. The Protein Society publishes the table of contents and abstracts for each issue of Protein Science about four weeks prior to publication of the paper journal.
E-mail is a "store and forward" service in which a message is passed from one computer to another until a message arrives at the location of the addressee. In other words, a message is forwarded from the sender's personal computer to a source mail server which, in turn, forwards the message to the internet, where it passes from mail server to mail server in the direction of the destination address. Finally, the message arrives at the destination mail server where it is stored until the intended recipient copies the message to his or her personal computer.
This store and forward scheme is similar to that used by a postal service. The difference between a postal service and e-mail is that the latter system effectively creates many copies of the original message as it passes through the various intermediate points. An unintended party can read the message at any place in which a copy is stored for forwarding purposes. E-mail messages are also vulnerable to interception during transmission by internet "sniffer" programs and other ways of intercepting e-mail traffic.
Disclosure on the Internet
An invention is not patentable if it is placed in the public domain before the critical date, which date depends on the patent laws of the relevant jurisdiction. The definition of disclosures which place an invention in the public domain also depends on the jurisdiction in question.
In Canada a disclosure of the invention by the inventor more than one year before the filing date of the application, which makes the invention available to the public in Canada or elsewhere, will prevent the inventor from obtaining a valid Canadian patent. A disclosure which is available to the public has traditionally been considered to be a disclosure which is available without restriction and which is disclosed without an undertaking of confidentiality and in the absence of a special relationship. Information which is posted on the internet and available without restriction would likely constitute a disclosure. Non-encrypted e-mail may not be considered to be generally available as it is not readily accessible. However, if an e mail is intercepted and posted or distributed by a third party, then the e-mail may become generally available. As a matter of caution, confidential information should not be transmitted by non-encrypted e-mail.
In the United States an inventor is disentitled to a patent where the invention was described in a printed publication in the United States or a in a foreign country, or was in public use or on sale in the United States, more than one year prior to the date of the application for patent in the United States. The term "printed publication" traditionally referred to just that i.e. a printed book or newspaper etc. However, U.S. courts more recently have emphasised that public accessibility is the key criterion of a printed publication and the fact that a reference is printed electronically rather than in paper copy is relevant only to the extent that public availability is affected. Today, U.S. Examiners frequently cite submissions to databases such as Genbank submissions made without a request for confidentiality.
The date of an electronic publication may be difficult to determine, but will presumably be the date the publication became accessible.
It is clear that scientists who use the internet should be aware that internet communications have the potential to destroy valuable patent rights. As fibre optic cables continue to replace metallic carriers as carriers of electronic publications, researchers are placing new information into the public domain at the speed of light. To avoid creating patent destroying disclosures, inventors should bear in mind that prior art is not limited to paper publications.
