Junk journals and disclosure – Patent law considerations

24 Jul 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 (the others being originality and industrial applicability) and requires that a would-be patentable invention must not have been fully described in terms of its important features, in public, before the date at which the patent application is lodged. It is now almost universally accepted, outside of a few oddball countries, that public description of a given invention before the filing date of the application (which is referred to collectively as the prior art) should be judged in an absolute or universal sense. This means that, in theory, any public disclosure anywhere in the world may be considered against the novelty of an invention when determining whether it is patentable or not.

Novelty therefore covers a wide amount of material, but is usually workable in practice given the narrow technical fields that patents tend to occupy. However, it leads to some rather strange outcomes when other factors come into play. One example is where a would-be inventor has previously filed an application which did not result in a patent but was published during the application process. This can result in follow-on inventions being 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 inadvertent own-goal is a constant headache for inventors who wish to protect the numerous improvements they may have made to a basic invention over time.

Another area of concern is the ongoing crisis of junk academic journals. This phenomenon is much talked about in scientific circles, and is driven by the need of academic researchers to publish their work in order to advance their careers and obtain funding. This ongoing need to publish papers, aided to some extent by the recent rise of so-called open access journals, has spawned a small industry of scientific articles of dubious quality being published in order to pad out publication counts. The articles range from the unexceptional to the outright fraudulent, and determining the difference is often exceedingly hard even for specialists in the field itself. An illustrative case is the scandal that rocked China’s scientific community in late 2015, where dozens of scientists were discovered to have been rigging the review system of a number of journals in order to publish their research. This is all obviously very concerning for scientists but poses an interesting problem for inventors as well, as the articles are all of course directed towards narrow technical fields.

The problem, of course, is that the while current definitions of novelty often make allowance for the plausibility of a disclosure (under the doctrine of enabling disclosure as applied to prior art), a misleading or fraudulent description of an invention written by a person skilled in the art may be exceedingly difficult to tell apart from a genuine technical advance. The recent glut of low-quality scientific research currently being produced by junk journals thus exposes inventors to the risk that their invention might be rendered non-patentable by a disclosure which may itself be unworkable. Worse, the increasing number of articles being published in junk journals means that this issue will become more and more common over the coming years.

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

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(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)
Thomas Schmidt

Thomas Schmidt is an Associate at KISCH IP with experience in patent and design prosecution, as well as in regulatory compliance. With a strong technical background in plant and crop... Read more about Thomas Schmidt


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