Ontology engineering

patents© 2010 Nature America, Inc. All rights reserved.How the PPPA procedure worksStep 1: Creating required components for PPPA through online paper submission systemOptionaldata filesSubmittedmanuscriptGenerate DTScertification(s)Step 2: Full patent application submissionFull patentapplicationProof of articlepublicationStep 3: PPPA validity determination by USPTOCondition 1: FPA due no laterthan 12–18 months pastDTS certification dateafter the filing date of the US PPA, in principle,the filing date of the PPA may also serveas the priority date for the non-US patentapplication. Consequently, US PPAs can beused in conjunction with other patent offices(e.g., the European Patent Office and JapanPatent Office), thereby potentially expandingthe grant of IPR beyond US soil.As already mentioned, although PPAstheoretically enable their submitters to sharetheir novel knowledge with other researchers,they do not obligate patent applicants to doso. In fact, because they are not full patentapplications, PPAs constitute an anti-incentivefor sharing novel scientific knowledgeoutside the patent system. For instance, if apatent applicant is unable to submit the fullpatent application within the allowed oneyearperiod, the applicant will lose the abilityto patent the invention, at least insofar as itis explicated in the early publication as thelatter now constitutes patent-blocking priorart 22 .The importance of the PPA procedureis that it opens the door to a contingentacknowledgment of underdeveloped andinformally submitted patent applications.Charge applicablefundsSubmitted manuscript& optional data filesSend author DTScertification filesDTS certificationfilesCondition 2: Submitted manuscript andoptional data files sufficiently disclose theinvention described in FPAFigure 1 A graphical outline demonstrating how the PPPA procedure can be practically employed.PPPA, provisional patented paper application; DTS, digital time-stamping service; FPA, full patentapplication; USPTO, US Patent and Trademark Office.Hence, PPAs are informally submitted in thesense that, for themselves, they are neitherpublished nor examined by the USPTO; andthey are underdeveloped (by design) becausethey purposely accept patent applicationslacking fundamental ingredients like claimsand the discussion of prior art, as long as theseapplications contain a sufficient descriptionof the invention and its scope. Consequently,in principle, a scientific paper that includesa description of an invention’s purpose andthe method(s) used to attain it may qualifyas a PPA. What’s more, insofar as the contentand submission date of such a paper canbe verified, the paper need not be physicallysubmitted to USPTO before the filing of thefull patent application, because other thanrecording their existence, USPTO does notexecute any action with regard to PPAs.From this perspective, therefore, scientificpublications would not constitute an externalprior art, undermining the eligibility of patentapplications. Instead, such publications,if recognized as provisional patented paperapplications (PPPAs), would provide the verysame protection that traditional PPAs granta future intended patent, including theirsupposed compatibility with the regulationsof non-US patent offices. At the same time,contrary to the existing model of PPAs, thesuggested PPPA alternative version will obligatepatent applicants to share their novelknowledge with colleagues through scientificpublications (Fig. 1).Thus, given the proper tools for date andcontent verification, PPPAs may be entirelyadministered by peer-reviewed academicjournals instead of the USPTO, therebyfurther binding such provisional patentapplications to scientific publications, whilesignificantly lowering the fee charged for theseapplications. Moreover, because the scientificpublication constitutes either the very PPPAor at least amounts to a significant integralportion of it (as will be explained later), thereis a direct incentive for potential patenteesto fully disclose the information concerningtheir inventions in the corresponding scientificpublications. Otherwise, they risk theireligibility to use the PPPA as the basis for thefull patent application, thereby underminingtheir ability to be granted with the desiredpatent and its conferred IPR. Similarly,potential patentees would be interested indisclosing that information as early as possiblebecause any delay in the submission ofPPPAs naturally increases the risk of potentialcompetition over their inventions.Meanwhile, as the suggested PPPA procedureis inseparable from scientific publications,the potential patentee might very wellchoose not to use this procedure. Therefore,we suggest that the PPPA be defined as anobligatory step on the way to filing a full patentapplication in biotech. This being thecase, it might also be advisable to extend thedeadline for filing the full patent applicationfor, say, another six months, so that potentialpatentees would have a larger safety net, coveringinstances where the paper is not immediatelyaccepted.Moreover, paradoxically, the supposedreluctance of potential patentees to usePPPAs, should this be left to their choice,appears to be grounded on a sort of prisoner’sdilemma, where the assumed leastrisky choice is conflated with and mistakenlypreferred over the best outcome choice, dueto lack of cooperation 40,41 . Hence, lackingknowledge regarding the decisions of otherpotential patentees concerning the use ofPPPAs and their entailed extra risks, a potentialpatentee would not want to take theseextra risks. For, by taking such extra risks, shemight put her invention in a more vulnerableposition than competitors who choose not touse PPPAs. Yet, theoretically, if all potentialpatentees agreed (that is, cooperated among138 volume 28 number 2 february 2010 nature biotechnology