Junk Science and Disclosure

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8 August 2018

One of the interesting aspects of patents is the degree to which countries have harmonised their laws. This stands in stark contrast to any number of other legal issues and is very welcome for patent practitioners (who, by the nature of their work, have to regularly interact with foreign patent systems). It does, however, create some interesting issues as well.

Take the issue of novelty, for instance. Novelty is one of the three universally-accepted requirements for a valid patent alongside inventiveness and industrial applicability, and requires that an invention must not have been fully described in terms of its essential features (in public at least) before the date at which the patent application for the invention in question is filed. Furthermore, any public disclosure anywhere in the world may, in principle, be considered when looking at the merits of the invention so long as it occurs before the date of filing. These disclosures form the prior art against which a patent is judged all over the world. Assessing this prior art is potentially difficult as it can, in principle, cover an enormous body of work. The task is usually much easier in practice, however, given the narrow technical fields that patents tend to occupy.

Assessing the novelty of one’s invention is normally a fairly straight-forward task. However, there are a few unusual issues which crop up every now and again. One problem, for instance, occurs when a would-be inventor has previously filed an application which did not result in a patent but was published in the course of the application process. This can result in follow-on inventions being rendered un-patentable, even where the previous application was refused, on the grounds that the previous application both forms part of the prior art and constitutes a novelty-destroying disclosure of the core aspects of the new invention. This can be a constant headache for inventors who wish to protect the numerous improvements they may have made to a basic invention over time.

Another problem involves the ongoing crisis of junk academic journals. This fairly recent phenomenon is much talked about in scientific circles and is, at its core, driven by the need for academic researchers to publish their work in order to advance their careers and obtain funding. This ongoing need, along with the recent meteoric rise of open access publication, has resulted in a deluge of scientific articles of dubious quality being published in order to pad out publication counts. This has, in due course, lead to the sort of academic fraud which is hard even for specialists in the field to distinguish from mere shoddy work.

This avalanche of junk science is obviously of concern for scientists, but also poses an interesting problem for inventors. This is because scientific articles, like patents, are usually directed towards narrow technical fields and the overlap can create seemingly valid prior art documents which are then counted against a patent application. The problem, of course, is that the while current definitions of novelty often make allowance for the plausibility of a disclosure, a misleading or fraudulent scientific article written by a person skilled in the art may be exceedingly difficult to tell apart from a genuine technical advance. Inventors accordingly face the risk that their patent application might be needlessly denied grant. Worse, the increasing number of articles being published in junk journals means that this issue will only become more common in the future.

At present the only solution is increased vigilance by both inventors and their patent attorneys. Having a patent attorney who is skilled in the particular technical field of the invention is also very important, as it may take a person skilled in both the art and the nuances of patent law to spot a bogus disclosure.

t-scmidt
Thomas Gerard Schmidt
Candidate Attorney
Patent Department
Email thomass@kisch-ip.com
Tel +27 11 324 3031