• Disclosing Your Invention -- Publish or Patent?
  • December 14, 2004 | Author: Brian J. Lum
  • Law Firm: Michael Best & Friedrich LLP - Chicago Office
  • Patents are granted for "new" inventions and discoveries. However, inventions are often disclosed to the public before the inventor has an opportunity to prepare and file a patent application. The disclosure may be inadvertent, or there may be commercial pressure to advertise and promote the invention as quickly as possible. Even in academia, there is often pressure to "publish or perish," and present new results as quickly as possible.

    Whatever the reason, once the invention has been disclosed to the public it may no longer be considered "new" and, therefore, may not be entitled to patent protection. Under Section 102(b) of the Patent Act, 35 U.S.C. § 102(b), an applicant is not entitled to a patent if the invention was previously disclosed to the public "in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States."

    Whether a disclosure constitutes a "printed publication" that prevents an inventor from obtaining a patent, depends on whether the reference in question has been disseminated and made sufficiently available to the public interested in the art. The Federal Circuit Court of Appeals, which handles the appeals of all patent cases, has articulated several factors to be weighed in determining whether a reference is a "printed publication" for purposes of Section 102(b): (1) the length of time the reference was presented to the public, (2) the expertise of the audience, (3) the reasonable expectations that the reference would not be copied, and (4) the ease with which the reference could have been copied.

    A recent case, In re Klopfenstein, 03-1583 (Fed. Cir. 2004), provides an example of the Federal Circuit's balancing of these factors. The applicant disclosed the invention in a series of 14 slides that were printed and shown as posters at a two different scientific conferences over a total of three days. The slides comprised short bullet points, with graphs and charts of experimental results. No copies of the slides were made or distributed, nor was the presentation cataloged or indexed in any library or database. The Federal Circuit held that the slides constituted a "printed publication" under § 102(b) because they were "shown for an extended period of time to members of the public having ordinary skill in the art," who were not precluded from taking notes or photographs. Furthermore, the information in the slides was presented in a way that it would have been relatively easy to copy such information.

    The question of whether a disclosure is sufficient to trigger § 102(b) is determined by weighing all the facts on a case-by case basis. It is possible that a different result would have been obtained if the inventor had taken steps to protect the presentation, such as by including a simple disclaimer informing the public that copying was not allowed. It is also possible that an oral slide presentation, without a poster, would not have been considered a "printed publication" for purposes of § 102(b).

    In addition to "printed publications," other activities can also bar a patent under § 102(b), such as the public use or sale of the invention in the U.S. more than one year prior to the filing date of the application. Consulting legal advice before disclosing new inventions to the public, such as by promoting them to a customer or investor, can prevent the loss of valuable patent rights.