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Aug 16

2010

No. 41: Does a Poster Alone Count as "Public Disclosure" under Patent Law, or Must There Be Handouts, Too?

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INTELLECTUAL PROPERTY

Does a poster alone count as "Public Disclosure" under patent law, or must there be handouts, too?

Reader Question: Some principal investigator colleagues of mine seem to have what might be called “presentation eagerness.” They want to offer their findings publicly as soon as possible. As a result, we often have "poster sessions" and lectures that are open to the public. Does a poster alone count as "public disclosure" for purposes of patent law, or do PIs trigger public disclosure only when they offer handouts, too?

Expert Comments: To the first question — as to whether a poster alone constitutes public disclosure — the answer is perhaps, under circumstances such as this: If you have a poster or several posters that the public can readily access and see, the courts might regard that as a public disclosure. That would start the one-year time clock for you to file a patent application.

The final determination of whether it's public disclosure often is a very fine line and each case is different, so a PI should consult his or her attorney or technology-transfer office for specifics of their particular case.

But here is an example that provides a guideline: A lecture is not a publication. However, if every time you give a lecture you put it on a CD-ROM, that is publication of the work and would count as public disclosure. In such cases, the poster session would be a public disclosure.

Here’s an option: If you as a PI want to have a poster session, instead of inviting the public, invite only select people to the lecture. And use a non-disclosure agreement that says that all information will be kept confidential and won’t be disclosed or used for your own benefit.

Another option is to file a provisional patent application with the patent office before the session. That establishes a priority date.

An effective general outline for the provisional application would be: The PI would explain what the problem is, how the prior art has failed to solve the problem, and how he or she will solve the problem. That should help protect their intellectual property – but again, consult the technology-transfer office for the specifics.

Expert comments by Howard Rockman, a Chicago-based patent attorney, intellectual property management consultant, author and lecturer. He has more than 40 years of experience in patent and IP issues.

Howard Rockman recently partnered with Principal Investigators Association for a riveting audio conference on Intellectual Property and Patent Laws. If you are interested in obtaining a recording (MP3 or CD) or a PDF transcript, click here!

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Comments (6)

Patent Attorney
written by Bruce Dowsing, August 16, 2010

Whilst I agree with most of what Mr Rockman has said, there are a couple of points I would like to add. A lecture can be a publication in the sense that it is a public disclosure. Therefore, in the absence of a confidentiality agreement, the disclosure could trigger the grace period (in the USA) to file a patent application. The real question about whether the disclosure is a problem is whether it is an enabling disclosure (a disclosure that is sufficient for another to reproduce the invention). For example, if a specific nucleotide sequence was essential in a method to identify a particular type of cancer and the disclosure was based around the screening method and data (but excluded the particular probe sequence)this would not be a publication of the invention as nobody could replicate the invention without knowledge of the nucleotide sequence. Thus, there are ways of publishing data on posters and in lectures that do not disclose the invention. One other point is that the grace period to file a patent application after disclosure of an invention is only available in very few countries (not at all in Europe and most of Asia). Therefore, if the invention is of high value and Europe and Asia are commercial targets for the invention, it is essential to have the poster or lecture screened by a tech-transfer office or patent attorney before disclosure, because the grace period in the USA (and Australia) will not save the patent elsewhere. Mr Rockman is correct, good practice is to notify the relevant IP Manager as soon as an invention is identified, so that issues of public disclosure (whether by peer reviewed publication, poster, or lecture) can be effectively managed and the invention can be protected appropriately.

Patent Agent
written by Neil Lupton, August 16, 2010

My understanding is that the standards for public disclosure against one's own applications (poisoning one's own well, as it were) may be more demanding than the standards against a 3rd party's application. One would certainly be expected to know about one's own presentations and to know that the public had been present. In that context, it can be argued that one would have the obligation to disclose such a presentation under 37 CFR 1.56. The options suggested by Mr. Rockman are prudent. In contrast, one cannot reasonably be expected to know of a presentation made by another person which is not indexed and not searchable. It is difficult to see how an examiner would become aware of such a presentation made by a 3rd party or how a court would consider it 3rd party prior art.

MPEP 2128.01 states (among other things) "Even if access to the library is restricted, a reference will constitute a "printed publication" as long as a presumption is raised that the portion of the public concerned with the art would know of the invention." This is part of the reason for the statement that one's presentation is more of a burden to one's own application than to 3rd parties.

VP for Research
written by David Felten, MD, PhD, August 17, 2010

Most poster presentations for major (or even small specialty) meetings are published in the form of "abstracts", even if only a small reproduction of the poster itself. I believe that the best test of public disclosure is whether or not a non-disclosure agreement was required for others to evaluate the data and results of the poster. If not, then it starts the clock ticking. If any attendee at the meeting, including faculty, students, vendors, and administrative help can wander past the posters and take notes or even photographs of the poster, then it should be considered a public disclosure.

...
written by Observer, August 17, 2010

A standard practice in my lab is to attach a one page document to a manuscript and submit a Provisional- this is a relatively low cost procedure. This gives one about 30 months to file a PCT so in the meantime one can generate more data and discuss in public if one wishes. I'm of the opinion that if you believe your work has sufficient potential commercial value worthy of patent protection, then best to file the provisional before any public presentations including posters, talks etc. Delaying presentation by a few months in order to submit the Provisional first is not that much of a sacrifice to make to let the rest of the community know about your work.

Former Department Chair
written by Dr. Fred, August 18, 2010

The real issue here is whether the inventor is an academic primarily interested in establishing or enhancing his or her record of achievement or whether the primary interest is ensuring the possible future commercial viability and patentability of the invention. If the former, then naturally there is a major interest in establishing priority and an early disclosure in a presentation together with an abstract is a desirable approach. If, on the other hand, patentability is important, then any disclosure is dangerous. There was a case several years ago where a member of the audience at a lecture took extensive notes that were widely circulated within his company. Even though the published abstract was only a limited disclosure, the accompanying lecture was more detailed and the note taker got it all down. In the resulting litigation, the Court held that the circulated notes represented a public disclosure. Global patent protection is crucial for commercial viability and a prior public disclosure will make it impossible. Trying to ensure that a disclosure is non-enabling can also be a trap if a competitor argues that the disclosure plus other prior art results in enablement. Trying to protect the work by filing a provisional patent application can be effective, but one has to ensure that the provisional provides an antecedent basis for ALL of the claims of the future regular patent application. This may be difficult to do in an early stage of the research.

Professor
written by Pierre Mallia, August 23, 2010

Look at it this way. If you don'twant it to be valid for patent purpose, and therefore not to count as public disclosure, then someone may legitimately 'copy' the results. In my humble opinion, even if one goes only for science, it is still public disclosure. In this case it was actually presented to the public.

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