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TechRoadmap Directions
Intellectual Property Issues of Interest to High Tech Companies
Vol 4 Issue 8 September 2004

in this issue

Are you a magician?

Now you see it, now you don't

Tip of the Month



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 IP Links of Interest

Making presentations at conferences of one sort or another is often a way to hype a new product (Excuse me, to introduce a new technology). For academics, publish or perish is a mantra. But conference presentations are fraught with peril for the inventor! The USPTO requires that you file a patent application no later than one year after printed publication of your invention and most foreign patent offices demand "absolute" novelty - that is, there can be no public disclosure before filing. A key question many clients raise is "What is a printed publication? Can I give an oral presentation without losing my patent rights? What about the slides I present?" If you ever give presentations of any sort, read "Now they see it, now they don't" to learn how two inventors tried to make their publication disappear from public view so they could obtain a patent.

  • Are you a magician?
  • Has your company ever made a public disclosure of a new technology and then regretted it? Have you wished you could magically reverse time and make your words disappear?

    Acting as your Director of Intellectual Property, TechRoadmap helps keep track of past and projected public disclosures and ensures appropriate safeguards for your IP. Visit our web site to review our services to see what works for you.

    Review our services
  • Now you see it, now you don't
  • Virtually every person who thinks they have come up with an invention understands that they can't go around telling everyone about their invention and still get a patent. Yet there are many instances where the inventors do publish the key elements of their invention prior to filing for a patent. Perhaps they don't think they have anything patentable. Perhaps their organization rewards publications. Perhaps their company thinks it will gain a marketing advantage by disclosing the newest technology now, rather than later.

    For whatever the reason, three researchers at Kansas State University who developed a method of double extruding soy cotylendon fiber which, when fed to mammals, helps lower serum cholesterol and raise "good" HDL cholesterol levels decided to make a poster presentation of their results at the October 1998 meeting of the American Association of Cereal Chemists ("AACC"). The poster display remained up for about 2 and one half days.

    Two years later two of the researchers filed a patent application covering the process. The Patent Office rejected the application based on the (2-year) prior publication of the invention, a rejection upheld by the Board of Patent Appeals. The applicants further appealed to the Federal Court.

    The applicants agreed that the presentation disclosed all the limitations of the patent and that there was no activity that would have limited the audience from copying the information. Instead the applicants argued that the poster presentation was not a "printed publication" since no hard or soft copies were distributed nor was there evidence that any attendees had photographed the posters. Further, they said, it had not been cataloged or indexed in any library or database.

    The court was not impressed. It said, "Indeed, the key inquiry is whether or not a reference has been made 'publicly accessible' the public interested in the art." To buttress its decision, the court used the applicants' own cited precedents: in one case an undergraduate thesis, presented to a small faculty defense committee and only indexed in the library by student name and thesis title, was deemed not a printed publication, whereas in another case the theses themselves where indexed and filed at the library and thus deemed publicly accessible printed publications.

    In the case at hand, the court pointed out that; the poster presentation comprised only 14 slides, of which maybe 8 contained substantive information and "only a few would need to have been capture the novel information...", the slides were available continuously for perhaps 60 hours, the observers were, by definition, of at least ordinary skill in the art and they would have been motivated to read the slides, there was no attempt to stop copying (and, the court noted, the volume of information so small it could easily be memorized), and it is certainly the expected norm at a conference that the audience will copy, make notes, or otherwise absorb the teachings of the presentations.

    Given this evidence, the applicants would have had to be magicians to make the information they displayed disappear from the memories, notes, or photographs of the conference attendees.

  • Tip of the Month
  • Any public presentation can affect your patent rights:

    • The safest presentation is no presentation - Yes, abstinence works, but just like it sometimes fails in other applications there will be times when you just have to make a presentation
    • File something as a provisional application - If you've been documenting your work you should be able to provide enough material to your patent professional to get a provisional application filed. You can always let it expire quietly
    • If you must present, limit your exposure - Do your best to make sure your presentation remains ephemeral. Stay with your poster paper to prevent copying. Don't give handouts. Request that no screen shots be taken (or better yet, speak without slides)

  • Disclaimer
  • Nothing in this newsletter should be construed as legal advice. TechRoadmap serves as an interface between companies and their legal counsel.

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