When I was an Examiner, the absolute worst part of my job was rejecting applications for patents from scientists by using those scientists’ own work against them.  I knew they invented something amazing and I knew they invented what they were asking for legal protection for … but because of the rules that I was required to follow, they could not have a patent for it…

Ultimately, I have had to reject otherwise brilliant patent applications because the inventors’ provisional application (i.e. “the placeholder”) posted at the Office more than one day AFTER their corresponding journal article’s pre-print posted online.

If the journal article has additional authors listed (i.e., fairly common because of the different rules for authorship vs. inventorship), then the publication is considered a “different inventive entity” and it is eligible for use as a 102-based art rejection – and usually a slam dunk one at that.

The “luckier” ones were still in the 1-year grace period, but the “unlucky” ones – were outside of it (i.e. publication more than 1 year prior).

IP practitioners: What are your best strategies for addressing this situation?