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If a biology researcher publishes a paper indicating that a certain molecule can be used to treat a certain condition, can another person then patent that molecule or would the right to patent that molecule be exclusively the original researcher's? If that researcher does not patent that molecule, would it then become freely usable by anyone? (It seems to me like the idea to treat this condition in this way would then be public knowledge.)

Aaron
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  • It can become more complicated in other fields. If a computer science researcher comes up with an algorithm, then publishes a paper describing the algorithm (but lacking some important details, such as how to tune some parameters) then they can still patent the algorithm, but I think the patent really only protects the details that were not disclosed in the paper. – Stef Aug 12 '22 at 07:43
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    AFAIK, the patenting of medicines is often a special case (but no jurisdiction ins mentioned). This is relevant, because often you simply cannot patent a molecule. What you can and do patent is a production process. Many jurisdictions will admit medicines onto their markets only when produced by an approved production process. Together, these two measures serve as a limited protection, but novel production processes of the same molecule would not be protected. – MSalters Aug 12 '22 at 09:17
  • @MSalters I don't believe that's true, novel chemical matter usually falls squarely into the "composition of matter" category of patents. There are many patented molecules including pharmaceuticals, preservatives, pigments, pesticides, and plastics. Generic pharmaceutical companies must wait for the original patent to expire before they can legally produce the same drug molecule, regardless of the manufacturing method. If that wasn't the case, generics would rush to find alternative manufacturing methods and cut out 99% of the drug development process. – Nuclear Hoagie Aug 12 '22 at 14:45
  • When two people state contradictory "facts," a citation to a reliable might be helpful. Even Wikipedia would be better than nothing, since it usually cites good sources. – WGroleau Aug 12 '22 at 16:52
  • @NuclearHoagie: "Composition of Matter" speaks to eligibility, and is part of the evaluation. I looked at the EPO Guidelines for Examination, and as I read it the problem with patenting a molecule would be the "Inventive step". What is the inventive step in a molecule? Now, there obviously can be an inventive step in the production of a molecule, or its application, but not in the molecule itself. – MSalters Aug 14 '22 at 12:33
  • For the "special case of medicines", see the section "First or further medical use of known products ". "A claim in the form "Use of substance or composition X for the treatment of disease Y..." will be regarded as relating to a method for treatment explicitly excluded from patentability under Art. 53(c) and therefore will not be accepted." That seems to cover exactly this question. – MSalters Aug 14 '22 at 12:38
  • @MSalters I don't see why you wouldn't consider the design of brand new, non-naturally occurring molecule that has never existed before to be an act of invention. You often patent the the production method as well, since patents require a practical implementation - you can't patent a theoretical molecule you've never synthesized. But that doesn't mean the molecule itself doesn't have patent protection. See this pharma patent which clearly claims the chemical structure as IP (see Claims): https://www.lens.org/lens/patent/001-892-512-397-359/fulltext?l=EN#claim – Nuclear Hoagie Aug 15 '22 at 14:02

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Once thwe molecule and its use have been published, that becomes prior art, and no other person can patent this. Whether the original researcher can seek a patent, or is precluded by his or her own prior disclosure, I think depends on the exact facts. I know that in some cases, disclosing an invention to the public waives any claim to a patent.

David Siegel
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  • Correct, such research publication would inexorably result in the finding of it being prior art. Limited disclosure may be saved in the U.S., but not elsewhere if the fact is established before the court. (As a matter of practical reality, one may get away with some disclosure elsewhere, but there is no legal basis for its protection. The U.S. has provisional patents and, to my knowledge, no other similar legal fiction exists elsewhere) – kisspuska Aug 12 '22 at 02:14
  • It also depends on the jurisdiction. I believe some jurisdictions have a "self-prior-art exception", at least for certain kinds of patents. – Jörg W Mittag Aug 12 '22 at 09:48
  • I'm not up on current patent law, but I was told years ago that in the US the inventor had one year from either trigger to file for a patent. The triggers are (1) public announcement, or (2) offer for sale. In this case, the article would establish (1). – Cristobol Polychronopolis Aug 12 '22 at 18:28