Innovating in the university setting: Will public disclosures affect my invention’s patentability?

Many academic researchers are generally aware that their own public disclosures, in the form of conference presentations, journal publications, etc., can impact their ability to secure patent rights for their inventions. In particular, your public disclosures can become prior art that can be used to reject your own patent applications.

That said, if you’re working in a university or research institution setting, you may encounter situations where it’s unclear if an invention has already been publicly disclosed, or worse, situations that are setting up your invention to be unintentionally disclosed.

At academic institutions, most university licensing and technology transfer officials would be familiar with navigating the tension between the institution’s obligation to publish its research findings and the need to protect the institution’s intellectual property.

However, prior art against your invention is not just limited to traditional, printed academic publications. In this blog post, we’ll discuss the potential ways you might encounter unexpected prior art in the university setting.

What is prior art?

More technically, the U.S. patent statute (35 U.S.C. 102) defines prior art as any disclosure of the claimed invention that falls in the following five categories, and was made before the effective filing date of the patent application:

1. Patents
2. Printed publications
3. Public uses
4. Goods and services sold or offered for sale
5. Information otherwise available to the public

Each of these concepts can impact university inventors in unique ways, as we’ll discuss in the next part of this post.

(For more detail on the definition of prior art, do check out our blog post, “What is Prior Art?”)

Prior art in the university setting: What kind of public disclosures count?

In the United States, a public disclosure barring patentability must meet the following three criteria:

1. Qualify as a “disclosure” according to the definition set out in the AIA
2. Provide an enabling disclosure of the claimed invention
3. Be sufficiently “public” in nature

We’ve already touched on the first in defining prior art, so let’s take a closer look at the others.

Enabling disclosure in prior art

A printed publication must be “enabling” in order to be considered prior art. Put another way, a printed publication must provide sufficient disclosure to allow a person of ordinary skill in the art to make and use the invention without undue experimentation.

Theoretically, for some types of technologies, it could be possible to disclose the nature of the invention without providing enabling detail. However, this is highly risky; the burden of proving that the disclosure is not enabling would fall on the patent holder. In practice, it could be very difficult to overcome an objection on these grounds.

One caveat to keep in mind is that a non-enabling publication can be used to reject a patent application. In particular, a non-enabling disclosure can be used to show that an invention is obvious, for example, when combined with other prior art.

Public disclosure in prior art

Under the America Invents Act (AIA), the disclosure is “public” if it can be reasonably accessed by at least one public person. Notably, there is no requirement to prove that anyone actually accessed the material.

Let’s examine the standard for public disclosure across the five disclosure categories shared earlier.

Printed publications

The term “printed publication” can often be confusing for inventors simply because this concept, in practice, has little to do with traditional “printing.” Rather, the idea of a “printed publication” is reflective of the information’s availability to an interested person and is a factual, case-by-case determination.

In fact, federal courts have recognized as early as the 1960s — in I.C.E. Corp. v. Armco Steel Corp. 201 F. Supp. 411 (S.D.N.Y. 1961) — that the “probability of dissemination” does not depend on whether or not it is traditionally “printed.” For prior art purposes, a printed publication can include information that is contained in online databases, content available on social media, a thesis or dissertation in a university library, and publicly displayed materials (such as poster presentations).

These two case outcomes reflect how public access to printed publications might be generally determined:

• In re Hall 781 F.2d 897 (Fed. Cir. 1986): Held that a reference would be considered prior art from the date it was indexed and cataloged in the library, so that interested persons exercising reasonable diligence could find it.
• Carrella v. Starlight Archery 804 F.2d 135 (Fed. Cir. 1986): Held that an advertising mailer could not be considered prior art because there was no evidence for its addressees’ date of receipt.

Moreover, these two cases illustrate what might be deemed reasonable public access to printed publications in a university context:

• In re Hall 781 F.2d 897: Found that a doctoral thesis is prior art because it had been deposited in a university library, indexed, catalogued, shelved, and available to the public.
• In re Cronyn 890 F.2d 1158 (Fed Cir. 1989): Found that a doctoral thesis is not prior art because it had not been shelved or catalogued in a meaningful way, and therefore was not reasonably available to the public.

Public displays

In In re Klopfenstein 380 F.3d 1345 (Fed. Cir. 2004), courts considered the following factors to determine whether a public display has been reasonably accessible to the public:

1. The length of time that the material was displayed;
2. The expertise of the target audience;
3. Any reasonable expectation that the material would not be copied; and
4. The ease with which the material could have been copied.

Public use & sales

Critically, public disclosures regarding both public use and sales of the claimed invention do not have a geographical limitation, nor are they required to be used by a third party (i.e., someone other than the inventor).

Consequently, the following examples could all be cited against the novelty of a patent application:

• Public use of the invention anywhere in the world, including use by the inventor
• Sales of the claimed invention anywhere in the world
  • This applies to any kind of sales, including secret sales; the use of a non-disclosure agreement will not help preserve patent rights.

The AIA does provide certain limited exceptions for the following:

• Experimental use
• Disclosures that represent the inventor’s own work
• Instances where a patent or patent application is commonly owned with an earlier patent or patent application
  • This will not apply to patents or patent applications that have been published for more than one year.

The experimental use exception in particular is fact-specific and determined on a case-by-case basis. As such, university researchers should not simply assume that their use will be deemed experimental, and should still endeavor to file patent applications within one year of experimental use.

“Otherwise available to the public”

Disclosures that do not fall into one of the above-mentioned categories might still be considered prior art under the provision of “otherwise available to the public.”

This category of disclosures is often seen as a catch-all for any activity that is public in nature. Put another way, this category emphasizes public availability over the actual means of disclosure.

As examples, this category could apply to:

• Poster displays (even if it is not a true printed publication)
• Internet postings, like on social media or blogs
• Commercial transactions (even if the transaction is not a sale)
• Oral presentations

The one-year “grace period” for public disclosure of an invention

Under U.S. law, you may file a U.S. patent application within a year of selling a product or publicly disclosing the invention.

If you’re working in a university setting, you may be able to hedge against any unexpected third-party disclosures by filing your patent application during this one-year “grace period.”

However, patent applications are time-sensitive, and relying on the grace period has its drawbacks. For one, the grace period only applies if the third-party disclosure is substantially identical to your claimed invention; in other words, it could still be considered prior art if it is sufficiently generic. For another, many foreign jurisdictions (like Europe) do not recognize the grace period, which means you could lose your right to obtain patent protection in some countries.

Managing the impact of public disclosures on your patent filings

In summary, any disclosure of a potential invention could be a potential bar to patentability. If you are concerned about an existing or potential disclosure regarding your invention, we recommend seeking input from qualified patent counsel or your university tech transfer office. Please feel free to get in touch with the team at Henry Patent Law Firm with any questions.