Technology Transfer

Publish And Perish:  How Publications Affect Patentability

Academic reputations are established through the publication of research results. However, patent applications can be ruined by the premature publication of a new invention.

One of the conditions for obtaining a patent is that the invention is "new." This means to obtain a US patent, the patent application must be filed within the one-year period following the date of any publication, which then establishes the "Bar" date. However, all foreign patent rights are lost if the publication precedes the patent application, even by a single day.

After a US patent application has been filed, international agreement creates a one-year period during which time additional foreign patent applications may be filed. In most cases, it is strongly advised that the patent application be filed prior to any relevant publication to allow an appropriate determination of whether foreign patent rights will be important. If an invention cannot be patented, it is much less likely to be licensed and earn money. Worldwide patent rights are critically important for some research areas.

What Constitutes Publication

An invention counts as published if it forms "part of the state of the art." In US patent law, as in most other countries, the state of the art is defined as "everything made available to even one member of the public anywhere in the world by means of a written or, visually displayed oral description, by use, or in any other way." 

Examples Of Disclosures

• Learned Papers, Journals and Magazines  
  The first day an ordinary reader or the general public could obtain a copy of the paper, journal or magazine counts as the published date. With standard indications of secrecy aided by prominently stamping the article as "Confidential," the process of peer review is generally not considered a public disclosure.
  
  Note:  many journals are published on the Internet and some are available prior to the publication date. The earliest date the journal or magazine becomes available to even a single, general reader determines the publication date. Accordingly, the cover date printed on the journal is not the decisive factor.

• Abstracts
  Submission of abstracts in advance of a conference does not constitute public disclosure. However, if abstracts are sent to the attendees via mail, the Internet, or are available at the registration desk prior to the presentation, the earlier date on which the invention becomes available to the general public becomes the publication date.

• Theses
  If the oral examination of a thesis is in public, the thesis counts as published by the fact of the examination. If the oral examination is in private and the thesis is shelved in a library, the thesis is counted as published when a reader could first obtain it, NOT when the first reader read it.
  
  Note:  the first day the thesis becomes available may differ from the formal cataloging or accession date. The thesis also counts as published if the supervisor lends it to someone without the borrower knowing it is to be kept confidential. In many universities, a thesis can be embargoed, but, to be effective, the embargo must have no special exemptions, such as allowing Emeritus Professors to access these volumes.

• Job Interviews
  Information conveyed during an employment interview or presentation is considered a public disclosure, even if the participants are asked to hold the information as "confidential."

• The Internet
  A message describing an invention on a web site or to a public newsgroup will be considered as published on the day prior to the posting because it becomes available at locations to the East of the International Date Line. Removing a message that had been previously posted does not alter the fact that it has been made available to the public. Even messages made to restricted newsgroups are considered to be published under the precept that a secret known to a significant proportion of the relevant public has ceased to be a secret.

• Poster Displays 
  Poster displays count as publication, even if the poster display is outside your lab, in the corridor of a building, or in a central display reception area. A university building is a public place and will generally have a variety of visitors.

• Exhibitions and Open Days
  Hardware and equipment on show at an exhibition or a visitor's day counts as being published to the extent that a specialist looking at it would understand what they have seen. Concealed characteristics are not considered to be published, unless the hardware or equipment comes into the possession of someone who is freely permitted to dismantle and examine it.

• Oral and Casual Disclosures 
  Departing from a prepared text at a formal presentation to answer questions is considered a publication of the revealed invention. Remarks at a small-scale seminar or a conversation around the departmental coffee machine, unless everyone knows what you are saying is to be kept secret, are publications. Generally inventors are free to discuss their research efforts with other knowledgeable faculty and students, but it does not hurt to remind the participants that discussions are to be kept secret. 

• Confidential Disclosure to Many People 
  Even if all the right precautions are taken, a confidential disclosure to too many people may cease to count as confidential. Legal interpretation of the law has taken the common sense view that a secret known to a significant cross-section of those active in a technical field is, in reality, no secret at all.

Realistically, for any of the above situations to matter, the "other side" usually an infringer seeking to invalidate a patent or a potential licensee trying to avoid royalty payments will have to prove that the thesis was prematurely released, prove when the inventor posted on the internet, prove a poster display prematurely revealed the invention, prove a statement made at a seminar, or whatever undermines the patent. Nevertheless, if serious money is at stake in a patent dispute, the other side will go to great investigative lengths in the hope of discovering some such flaw in the patent prosecution.

Grace Period

The United States is different from nearly all other countries in that the inventor of the invention may file a patent application within a "grace period" of up to one year after publication. Other "grace period" countries are Japan (only six months and then only if the patent office is notified of the publication at the time of the patent filing), and Canada. A grace period merely removes your own publications from the stock of all literature, which comprises the prior art. It gives you no immunity from the effects of other people's publications or patent applications.

Note:  for all countries, with the exception of the grace period countries: USA, Japan and Canada, the patent application must precede any publication of the invention if only by a day, or the patent may be ruled invalid. However, once a US patent application has been filed and this filing has preceded any publication of the invention, the inventor has an additional one-year period to file any additional foreign patents.

Undergraduate and Graduate Researchers

The importance of keeping innovation and research results confidential may not be obvious to new researchers, who have had limited exposure to the potential value of a patent. It is important that the principle investigator or the senior faculty member take a moment and explain the need for confidentiality to any new researcher, especially if that research may result in valuable intellectual property.

How To Keep Something Confidential

To ensure the patent application rights are maintained, the person with whom you intend to discuss your invention must know in advance that your disclosure is meant to be kept confidential. Although confidentiality can be inferred from the circumstances of the disclosure, it is usually much safer to record your mutual rights and obligations through a Confidential Disclosure Agreement (CDA), also referred to as a Non-Disclosure Agreement (NDA), signed in advance by the person receiving the confidential information.

It is important to be selective in determining with whom you choose to make your confidential disclosure. Although there are legal provisions for protecting your rights if your invention is disclosed against your will, those provisions carry time limits counting from the wrongful disclosure and are not a complete safeguard once the information becomes generally available. Also, it is strongly advised that you not make any disclosure, including a confidential disclosure, to a potential customer or licensee for the invention until the patent application is filed. The Technology Transfer Office (TTO) can assist you with the preparation of the appropriate agreements to protect your patent rights.

Patent Assistance 

Before publishing the results of any research, the author needs to ask whether the document or disclosure contains any innovation or discovery that could be patented. As previously stated, all foreign patent rights are lost and a one-year time limit is established for any US patent rights upon publication. If there is any question or doubt as to the patentability of a new innovation, researchers are encouraged to complete an Invention Disclosure form and contact the TTO.

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This information provided is solely to convey how a premature publication can undermine the validity of a patent. The information does not contain definitive legal advice and should not be used as a substitute for the advice of a lawyer or patent attorney. For additional information or answers to specific questions, please contact the Technology Transfer Office.