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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.)

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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 at 7:43
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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 at 9:17
  • @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. Aug 12 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 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 at 12:33

1 Answer 1

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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.

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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 at 2:14
  • It also depends on the jurisdiction. I believe some jurisdictions have a "self-prior-art exception", at least for certain kinds of patents. Aug 12 at 9:48
  • 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). Aug 12 at 18:28

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