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As a postdoctoral researcher, I came up with a novel idea for the treatment of a disease. I dedicated many years to this project and proved my hypothesis correct. I presented my findings at large international meetings and then had them published in a peer-reviewed journal, with many news outlets publicizing the story and findings in early 2014. Recently I found that someone else had patented this treatment for this disease after my presentations and publications. After seeing my results, this person just replicated the exact studies I did in mice to show the same effect in rats and has not even published their findings in a peer reviewed journal. My question is: do I have grounds to claim my findings as prior art and block or invalidate their patent? For frame of reference, I first presented the results publicly in fall of 2011 (during a poster session in which this other person took copious notes of my experiments and results), more supporting data in fall of 2012, submitted the results for peer review in the summer of 2013 and they were published in a peer reviewed journal February 2014. This other group filed their patent (apparently based on my work) February 2013 and it was issued November 2014.

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In general-- if there is a patent that was issued in the United States that you believe should have named you as an inventor or co-inventor, there is a path to remedy this situation via 35 USC 135 which replaced the old 35 USC 135 for interferences. The new 35 USC 135 is the new derivation proceedings which is a narrow exception to the new first to file rules.

You may have problems under the new rules as you had to act within a year of the application's publication or issuance. See 35 USC 135(2) http://www.bitlaw.com/source/35usc/135.html

Another tool is to correct inventorship through 35 USC 256. There is an easy way through the USPTO but that requires the other inventor/assignee to agree. That may not happen here. You also have an option to file for correction of inventorship in Federal District Court. Becoming an inventor means that you (or an entity to whom you are obligated to assign) becomes the owner or co-owner of the patent. The burden of proof is high. See http://openjurist.org/333/f3d/1330/board-of-education-mds-v-american-bioscience-inc

See also http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=12c99bf6-30bc-4d6b-8956-e07b2fec420c for a longer discussion of this topic.

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Firstly, you should be accurate with the terminology with respect to the dates. Additionally, which country was the patent filed in?

Were they also looking for protection in any other countries?

What is their earliest priority date? You say that they filed in Feb' 13 and the patent was granted in Nov' 14. This is impossible by the standards of any developed country (US, Aus, Europe, NZ, Canada, Japan, etc.). Patent prosecution takes years (min 2-4). WHat you are referring to here may be the date it was published in the respective Countries patent database. (Each country has their own database, and after certain period with in the prosecution, the application is published (not granted). Typically, this takes 18 months from the date of filing.

What would help in your case is: 1) find out the application number,
2) go to the patent database of the Country the application was filed in, 3) search for the patent

You will be able to see the historical records of that application, i.e, what is happening with that application if it is still under prosecution. What were the objections raised by the examiner.

Additionally, as you say if your research was published in a peer-reviewed journal, it would be considered as prior art and would definitely appear in their search reports and any decent patent office would raise objections with novelty of the application (not to mention the application should be non-obvious to a normal person skilled in the art).

If by chance, lets say their patent application is granted. What are you trying to accomplish here? Because, you wouldn't be able to basically apply for a patent, or somehow transfer that patent on your name. Your only option would be to oppose/ revoke a grant of a patent for them.

  • Henry Jones, PhD, Patent Agent in NZ
  • An application filed in the US under the Track One program will get examined on an expedited basis and may be issued within a year. I do not know if that is the fact pattern here, but it is possible in the US to get a patent in 18 months. – Kevin E Flynn May 27 '16 at 18:09

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