Traditionally, the old adage "publish or perish" has governed a person's success in academia. Nowadays, most colleges have a new mantra when scientific inventions are involved. As universities continue to partner with businesses to commercialize their discoveries by patenting them, the new academic motto is perhaps "publish and perish." Under the Patent Act, an invention described in a "printed publication" more than one year before the filing date of a patent application will bar a patent on the invention.
Whether you are a sophisticated university or a lone inventor, the point is that publishing your work may not always be a good idea. Indeed, the United States patent laws actually give inventors a break. In almost all foreign countries, there is no one-year grace period. As a result, once the invention is "published," a patent application must already be on file in order to prevent foreign patent rights from being forever lost.
Moreover, when it comes to patent rights, savvy inventors should realize that "printed publications" are not just books and magazines. A paper abstract or slick brochure can constitute a "printed publication." Whether a document meets the definition of a "printed publication" depends on the facts. For example, the courts have found that a single copy of an indexed and catalogued doctoral thesis deposited in a German library was a "printed publication." Likewise, one court found the existence of a "printed publication" when (1) the paper was presented orally to a conference of 50 to 500 members working in the field, (2) a copy of the paper was given to the head of the conference, and (3) copies of the paper were given to six individuals. In contrast, another court found that documents labeled "reproduction or further dissemination is not authorized . . . not for public release" were not "printed publications" even though the documents were not classified and distributed to about 50 government organizations and employees.
In August 2004, the Federal Circuit went one step farther. In In re Klopfenstein, the court found that a temporarily displayed presentation that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a "printed publication." The court held that "public accessibility" was key. The court noted that the factors relevant to the case were the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material could have been copied. In the case, a researcher from Kansas State University had presented a printed slide presentation on poster board for two and a half days at an American Association of Cereal Chemists Convention. The court emphasized that only a few of the slides presented would have been needed to capture the novel information presented by the slides. The court also noted that although the presentation was not disseminated or catalogued in any library or database, there was also no disclaimer notice prohibiting note taking or copying of the presentation. Thus, the court found that the slide presentation was a "printed publication" that barred the applicant from obtaining a patent.
It should come as no surprise that there are no hard and fast rules when it comes to patent law and patent strategies. Yet, one thing is universally clear: university researchers should be careful about making any sort of public disclosure or risk losing patent rights (and ability to profit from them) forever.
Lana Knedlik, a registered patent attorney at Stinson Morrison Hecker LLP, practices in all areas of intellectual property law, including patent, trademark, and copyright prosecution, licensing, due diligence, litigation support, and client counseling. Lana’s experience includes counseling clients on invention disclosure and trade secret programs, performing patentability searches and opinions, preparing and prosecuting patent applications, and drafting infringement and validity assessments.