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Patents and IP

Oops. We Didn’t Mean to Publish That.

Here’s an interesting situation, courtesy of Retraction Watch – trying to pull back a paper because it disclosed something that was supposed to be the subject of your patent. Say the authors of the paper in the Korean Journal of Physiology and Pharmacology:

We regret to inform that the published paper included a few parts that disclosed confidential information which should have been protected under patent law. We admit that the request for retraction is due to the indiscretion of the authors, and confirmed that editorial committee of KJPP have not conducted any fault in publishing the paper.

I would think that if you’ve disclosed, you’ve disclosed, so this will all come down to timing. Shouldn’t matter much whether the paper has been retracted or not. . .

8 comments on “Oops. We Didn’t Mean to Publish That.”

  1. MTK says:

    Sort of tough to put that genie back in the bottle.
    I imagine that the editors required the authors to put that last sentence in.

  2. petros says:

    Almost certainly stuffed.
    I recollect one patent being lost because someone had disclosed the key part of the (method) invention at a minor meeting. Unfortunately a competitor spotted this and used it to invalidate the patent.
    (And that was pre Internet days when it was easy not to pick up such things)

  3. a. nonymaus says:

    Given that the full text of the retracted paper is still available, they are certainly hosed. Patent law doesn’t, to my knowledge, care if you say “I’m not saying this!” before making a public statement.

  4. TeddyZ says:

    Would this be the scientific equivalent of an off-the-record quote?

  5. Bruce Hamilton says:

    Perhaps the compound may have been supplied to the researchers with an agreement or understanding about prior notification of results and publication. This could be their response in an attempt to minimise liability to the supplier.
    The paper mentions patent applications for the compound family have already been filed, so this may have impacted on future patents.

  6. newnickname says:

    Aren’t submitted papers considered to be “confidential until published”? If so, what is the publication date? Suppose you submit on Day-1, referee and revise until notified that your paper was “accepted for publication” on Day-90. That’s about when you’d want to file your patent application to get the extra three months of patent protection.
    If publication is a few days later, you’ve got time to file; if publication is computerized and automatically out there as “ASAP” or “Early View” you might miss the filing date and you’ve been disclosed — and screwed — prematurely.
    Some early views are galleys, before final corrections, so you may not be in control of the public disclosure by holding back your final edits. Still screwed.
    [Their dates are: submitted Apr 09; accepted Jun 12; published on-line Aug 10. Looks like plenty of time to file before publication and disclosure.]
    I haven’t read the whole paper, but looking at their Fig 1, the structure and the name, I can’t actually figure out what SKL-NP is supposed to be. The structure isn’t a “3-oxo”, the name doesn’t contain a thiophene, the MW doesn’t match ChemDraw’s name-to-structure structure. Maybe they are still OK by virtue of chemical ambiguity?

  7. overthe says:

    Once in the public domain, always in the public domain. Retracting a publication doesn’t change that. In the US, they now have a 102(b) date that gives them 12 months from the publishing date to file an application. If they fail to do so within the 12 months, anything disclosed becomes prior art and will haunt them in any subsequent patent applications.

  8. cdsouthan says:

    I have done some following up, including a possible structure, and the plot thickens

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