Re: Establishing Priority for Patents

From: Charles Oppenheim <C.Oppenheim_at_LBORO.AC.UK>
Date: Wed, 14 Feb 2001 09:37:01 +0000

Adrian Pickering wrote:
>NO. If they do this they blow away any protection available elsewhere else
>in the world. Only the US has the concept of 1yr gracetime. If they want
>other patents they must not disclose ANYTHING until the patent is filed in
>participating other countries (where filing priority dates are shared).
>That includes sending it to editors - that consititutes public disclosure
>and blows the case.
>> jt> The process of filing for patent protection can be completed
>> jt> during the time that the manuscript is being considered for
>> jt> publication (and *isn't* in the public domain yet).
>NO. Unless you have a non-disclosure agreement that is watertight with
>everyone who touches the paper there will be a problem. Therefore, this is
>not practical. Further, you are sending the paper to be read by JUST the
>people who may know how to exploit the knowledge.
>> jt> for patent protection -> self-archive a preprint
>Yes. You must file beforehand. You should also secure your data leading up
>to the filing also (in case of 'diligence' challenges). Self-archiving a
>preprint could be done provided it is encrypted. However, this is not
>necessary. File the *hash* of the preprint only. Then, there there is
>absolutely NO possibility of disclosure whatsoever.
>See for the principles.
>RSA lost their ability to patent public key encryption outside the US just
>because they forgot to follow the rules above. That was rather a big mistake!
>The European patent system is seriously considering a gracetime model
>similar to the US, but it is going to take a very long time to happen, if
>at all.

Rarely have I seenstatements made with such force and yet be totally wrong.
The original posting was correct. So long as you get your first filing for
a patent in before you submit for publication elsewhere, you then have a
one year grace period for filing anywhere in the world under the
International Patent Convention. This applies to virtually every country
in the world. So it is PERFECTLY SAFE to show your material to referees,
post it on the Web, etc. after you have made your first filing and before
you do foreign filings under the International Convention. The only
proviso is that under the Convention you MUST file all the patent
applications in other countries within a year or you lose the earlier
priority date. Once you have filed your first patent application, there is
no need to insist on non-disclosure agreements with anyone else, though it
very helpful if you draw peoples' attention to the fact that you have filed
a patent application. The gracetime period allowed in US law is something
completely different, allowing you one year from the date you first show
the invention in public before filing your *first* patent application.

I do not know anything about the RSA case, but I suspect they failed to
file outside the USA under the International Convention rules. The
Convention has certain strict bureacratic rules that it is easy to fall
foul of. But the principles behind it are clear and hundreds of thousands
of patents are safely filed under the Convention every year.

Professor Charles Oppenheim
Dept of Information Science
Loughborough University
Leics LE11 3TU

Tel 01509-223065
Fax 01509-223053
Received on Wed Jan 03 2001 - 19:17:43 GMT

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