Scientists and IP: Avoiding the pitfalls of publishing research

Publishing scientific findings after a patent application is filed can lead to more than a few potential pitfalls as a panel at LSPN Europe last week explored.

But there are ways to avoid these.

During the panel, ‘Critical strategies for successfully prosecuting patent applications’, experts addressed surefire strategies, including clear communication, educating stakeholders, and strategically managing disclosures to protect IP in the case of scientific inventions.

Carsten Richter, head of division IP at EuroImmun, offered a salutary case study.

When scientists at his company discovered a new autoimmune and autoantibody, backed by a reasonable amount of data, they filed a patent application in Europe and the US while the scientists published their findings in a paper.

This, however, led to some challenges in the US.

Richter explained how he received a notice from the US  Patent and Trademark Office, where the examiner highlighted some data in the scientific paper that the patent application had excluded.

No vague ideas

The examiner pointed out that the inventors acknowledged the speculative nature of their invention, emphasising that patent protection requires “a clear and enabling disclosure”, not vague ideas.

Hinting at an idea doesn't meet the criteria for patent protection, explained Richter.

Despite this objection, Richter’s team managed to convince the US patent examiner to grant the patent.

“This shows that even scientific data published post-application can have an impact on the prosecution,” said Ritcher.

Communication is key

Typically, discussions between IP professionals and scientists involve reviewing the manuscript the scientists plan to submit, and based on that, a patent application is drafted, and priority is filed.

However, when the final publication emerges, additional paragraphs may appear, and these “can be detrimental afterwards”, according to Hannes Iserentant, head of IP at Celyad Oncology.

To address this, Iserentant recommended viewing every single draft and the final version before it’s submitted.

This ensures the possibility of filing a supplementary application, if necessary, to cover any new content.

“Communication is key. You need to be on good terms with your scientists, with regulatory people to make sure you grasp as much as possible in your filings to avoid being surprised,” added Iserentant.

In certain situations, disclosure of data is unavoidable, especially for publicly listed companies.

Thomas Boehmer, former head of IP at Pieris Pharmaceuticals said: “In most cases, it's also possible to control the content of the public disclosure to some degree.”

“You need to convince your management as well that the patenting process there is important,” as it can have an effect on the patent application.”

Development of academic journals

Some new journals follow a unique approach where submitted manuscripts are published immediately, similar to common preprint services, said Richter.

The review process can be expedited, with reviewers' comments and edits going online almost instantly, including feedback from the public.

Richter explained how some journals even allow public comments, creating a platform for a potential public debate between inventors and their academic rivals.

This isn't necessarily a negative thing, especially if an individual is aiming for a robust patent, he added.

“Everyone has an opportunity to comment right away, if you're alerted to any relevant state of the art, instead of seeing it five or ten years later during litigation,” said Richter.

However, reviewers often have a different perspective than examiners.

Examiners consider the viewpoint of an average person skilled in the art, while reviewers are experts in their field, and can draw on decades of experience.

However, if a reviewer's nuanced comment isn't properly distinguished by the examiner, this can lead to challenges in the patent process.

LSPN Europe was held on Tuesday, November 21 at  BMA House in London. LSPN North America Spring 2024 will be held on April 10-11, 2024 in Boston, MA.

To register or for more information click here: https://www.lspnnorthamerica.com/.