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So I recently filed a provisional application for an IP that is a process attached with extreme significance in bioinformatics - a data analysis process that can be used to make a health service 1/100th the cost. It is a clearly patentable process. It does not qualify for national competitiveness in the legal definition, but being US based would have a profound impact in health related applications in a few years.

I disclosed this process (confidentially) to a department head at my university in the Fall. I Filed in early April. My concern is around a data breach found recently from the Fall.

I keep all the details of my development over years (dated as far back as 2016) in immutable storage (cross regional server on permanent retention in a WORM bucket). Given this and the details of the investigation ongoing I feel confident that I can later prove a filing made without my knowledge was based on my work. So for the questions below please assume this is the case.

If the process were publicly disclosed before April by a period of 6 months but not filed in any way would I still be able to file a PCT and maintain global IP control if granted? To be clear this disclosure was not made by any university employees but from illegal access to my computers.

If the process was filed as a patent before my provisional (which only had confidential disclosures to refine the process and extend IP window for sale) by a period of more than 6 months would I maintain global priority if I were to win a derivative process proceeding? As in if they filed in summer of 2020 and I filed in April of 2021, then I were to win a derivative proceeding would I gain the priority date of their filing?

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A partial answer is that the derivation proceeding you mention is a process within the USPTO. Establishing that an earlier U.S. filing was derived from your work would only help you with the USPTO and not likely remove an earlier filing as prior art in the eyes of any other patent office. You can file a PCT application since the PCT itself does not make a ruling on this since that application is a bundle of applications to individual countries and each patent office follows its own laws and procedures once you enter the national stage there.

Also, derivation proceeding were established by the AIA passed in 2012. Up until 2019 the PTAB rejected all attempts to even initiate a derivation proceeding and in the first one allowed to go forward in 2019 it ruled that there was no derivation.

Some countries may have grace periods and some may have ways to argue the case that an earlier disclosure or filing was essentially stolen from you. However, the fundamental purpose of requiring strict and broad unbroken novelty and first-to-file is to avoid all such messy arguments. Someone with expertise in EPO law may offer a more complete answer.

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For the EPO (applies to some other jurisdictions with similar laws):

If your invention was published more than 6 months prior to your filing, your application won't survive. This might be a dark net database for example, but tbh I would expect it to be very difficult for anyone to prove this publication and it's date. So the risk seems small.

Derivation proceedings at the EPO include the possibility of gaining control over their application. If the application is good and they have one at the EPO, you might be fine.

If they do not have an EPO application, their yet unpublished application won't be prior art for your application.

So overall, your chances are good, but if you do see an application based on your invention, act fast. The more time they have to screw up the prosecution or abandon the application, the worse it gets.

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  • As a personal note: the fact that you didn't ask your attorney and say "I filed" let's me assume you might have filed yourself. If that is the case, with a big probability, your application/priority won't hold at the EPO. Is focus on that problem then. – DonQuiKong May 3 at 7:01
  • Does your remark about publication 6 months prior to the the filing relate to Art. 55 EPC? I believe 'To be clear this disclosure was not made by any university employees but from illegal access to my computers' would not be considered evident abuse within the meaning of Art. 55(1) EPC. In fact, even if the disclosure were to be made by university employees I still think it would not be considered such evident abuse. In any case, I guess that by 'provisional application' OP refers to US provisional, so OP would have to hurry and file an EP. – the Europeist May 4 at 15:04

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