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Most scholars must produce timely research results -- otherwise they could lose financial support or not gain tenure. But the rush to announce or publish findings can sometimes cause unforeseen problems when it comes to protecting intellectual-property rights, particularly patents.
The consequences are especially severe and immediate for patent applications filed abroad. Most patent offices outside this country require “absolute novelty” in deciding whether to issue a patent. That means that the invention must not have been previously known to the public, sold or offered for sale (publicly or secretly), or made available to the public anywhere in the world in any way before the filing date. If an invention is not “absolutely novel,” a patent will not be granted in most countries.
How does that affect a researcher’s everyday work? Suppose you are asked to give a presentation at your annual disciplinary conference. While the invitation is undoubtedly a great honor and an opportunity for recognition, you could ruin your chance to procure international patent rights. Most foreign jurisdictions would deem an oral presentation as sufficient disclosure to trigger the absolute-novelty bar, and you would probably surrender those rights by the time you finished speaking.
In contrast, the United States does not require absolute novelty under its patent law; an inventor is given a “novelty grace period.” But patent laws in this country have their own pitfalls, in particular the “printed-publication bar,” which gives an inventor up to one year to file a patent application after any publication, sale, or other act that places the invention in the public domain. If the inventor fails to apply within one year, he or she will permanently lose the patent rights for the invention.
The thorny question is what defines a “printed publication.” In general, a reference will be classified as such if it has been made sufficiently accessible to the public. Certainly a journal or magazine meets that standard, but courts have interpreted the term far more broadly. A researcher who is not careful can easily start the clock that can trigger the printed-publication bar without even being aware of it.
Consider the well-known 1986 Federal Circuit case, In re Leo M. Hall, that brought into question whether a doctoral student’s thesis qualified as a “printed publication.” As a matter of institutional policy, all student doctoral theses at the University of Freiburg in Germany were indexed, cataloged, and placed on the shelves of the university library, where anyone could refer to the works. Even though only one copy of the student’s thesis was in the library, and it was not made available anywhere else, the U.S. federal court deemed it a “printed publication.” It ruled that the student should be barred from obtaining a patent because he filed an application more than a year later. According to the court, the cataloged thesis was “sufficiently accessible,” and anyone with an interest in the subject matter could find it by exercising reasonable diligence.
Recent court decisions have expanded the definition of a “printed publication” even more broadly. In one case, an inventor gave a presentation at an industry conference and posted the presentation slides on poster boards, where they were displayed for two and a half days during the conference. No copies of the slides were handed out, cataloged, or indexed in any library or database, but the court found them to be a printed publication. Given that the inventor had made no effort to prevent the audience from copying the presentation, and given the large number of people skilled in the subject matter who viewed the presentation, the poster boards were considered sufficiently accessible to the public to meet the standard.
The lesson for faculty members is clear: A seemingly innocuous action like submitting a thesis or posting research results may start the countdown for filing a patent application.
If you are caught between the need to protect patentable research findings and the desire to disseminate important information to colleagues in the field, what should you do?
Most important, you need to know what you are getting into and take the proper steps to protect your ideas. For example, conferences usually require speakers to submit abstracts about proposed topics of panel discussions. Often, conference moderators will post those abstracts on a Web site or distribute them to conference attendees without the presenters’ knowledge or explicit permission. Each action may be enough to trigger either the absolute-novelty bar or start the clock running for the printed-publication bar -- and ultimately prevent an inventor from obtaining certain patent rights.
The best way to avoid that scenario is to take the initiative. You should file a sufficiently descriptive patent application, either a provisional or a regular one, in the United States before publicly disclosing the invention -- whether that disclosure occurs through a periodical, disciplinary conference, Internet abstract, or research results posted on a board outside your office. Filing early will protect your idea both domestically and -- with a subsequent foreign filing -- abroad.
Securing patent rights can be as valuable to the researcher, or more so, than meeting publishing requirements. A little foresight and planning can prevent losing recognition and protection for all your hard work.
Robert G. Copeland is a partner in the San Diego office of the law firm Duane Morris, and Thomas F. Meagher is a partner in the New York office.
http://chronicle.com Section: The Chronicle Review Volume 51, Issue 38, Page B6