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Many inventors know that if they disclose information about an invention more than one year before filing a patent application, patentability is barred because the invention is no longer new or "novel." However, some inventors may not be aware that certain common practices within academic institutions can constitute disclosure and thereby prevent patent awards. With awareness and attention, these pitfalls can be avoided. See below.
Certain activities occurring more than one year before a patent application is filed will negate the validity of the claim and therefore bar an award. These include: making the invention available for sale, placing it in the public domain (for public use), and disclosing it in a printed publication either in the United States or a foreign country. The latter, although it seems straightforward, can occur-in the view of the court-without the inventor intending to do so.
The Patent Act states: "...if an inventor discloses his invention to another in any manner, without securing a promise of confidentiality, communication of the knowledge of the invention to the public results because the knowledge thereof is no longer controlled by the inventor, and thus is considered an irrevocable dedication to the public." (Emphasis added.)
Inclusiveness of “Printed”
"Dissemination" is really the crux of the matter, rather than the physical form of the transmission of information. Courts have construed "printed" to include microfilm, slides, drawings, blueprints, and photographs as well as words on a page.
Theses and Dissertations
One copy of a thesis, properly indexed and shelved in a library, constitutes dissemination because the information regarding the essence of the invention is accessible. If a graduate student's thesis describes the invention, is available in the library, and the student's professor files a patent application thirteen months thereafter, the claim can be invalidated by a challenger. Some universities place a hold on cataloging and shelving of a thesis or dissertation if the document describes the subject of a soon-to-be-filed patent application.
Presentations at Professional Meetings
If the description of the invention is limited in scope such that a person of ordinary skill in the art would not be able to glean enough information to duplicate the invention and no handouts are provided, no harm is done. Slides can be shown without loss of patent protection, but no handouts should be distributed, and the oral description should not be detailed. The key is whether a person of ordinary skill in the art could take what was presented and create an identical product or process.
If handouts are provided and the material presented is of sufficient detail that an interested person with ordinary skill in the art could make the invention, then publication would have occurred, according to the court. MIT has lost at least one patent in this manner.
Drawings and Photographs
Drawings and photographs can contribute to the loss of a patent if no restriction of confidentiality is placed on them at the time of distribution. The same principle applies to drawings, photographs, and brochures as indicated above.
An inventor must take care to ensure confidentiality by either:
- Using a confidentiality agreement if disclosed in detail, or
- Taking precautions to reveal only minimal details and avoid providing documentation of any kind that would aid a person of ordinary skill in the art to make or use the invention
With reasoning similar to that involved in the ruling that a cataloged and shelved thesis or dissertation constitutes a printed publication because the information is accessible, the court has held that a grant proposal is a printed publication. This is so because it is indexed and available to the public through the Freedom of Information Act (FOIA).
Strategies for avoiding loss of a patent claim through disclosure in a research proposal include drafting the proposal so it is not enabling, marking proprietary information with a legend indicating such (research with commercial value is exempt from disclosure under FOIA), and filing a patent application within one year of the disclosure in the proposal.