Dangers of Discussing New Inventions at Industry Meetings or Conferences
Companies often want to discuss some of their latest innovations at industry conferences to establish their technical prominence and build their brand. Inventors who are academics often want to describe their work to their peers to develop their reputations in their chosen fields. While such activities are commonplace, they need to be coordinated with patent counsel to ensure that they do not inadvertently foreclose obtaining patent protection.
Under the America Invents Act (AIA) and its predecessor, disclosing inventions in “printed publications” more than one year before filing a patent application will preclude you from obtaining a patent. 35 USC § 102(a)(1) and (b)(1) (AIA) and 35 USC § 102(b) (pre-AIA). Under the AIA this one year grace period only applies if the disclosure was made directly or indirectly by the inventor. Otherwise, a disclosure even a day prior to filing will preclude patent protection.
The Federal Circuit Court of Appeals recently discussed the meaning of “printed publication” in Jazz Pharma. Inc. v. Amneal Pharma, Inc. (Case No. 2017-1671)(Slip Op. July 13, 2018). For a copy of the opinion, click here.
The facts of Jazz Pharma. are perhaps not too remarkable in that the disclosures at issue were made in the Federal Register and on the FDA website more than two months before the one year patent application filing deadline (the “critical date”). However, the Federal Circuit summarized the “printed publication” case law and explained that a reference (such as slides, handouts, brochures, etc.) is a “printed publication” if it is “publicly accessible.” Jazz Pharma. at 13. A reference is considered publicly accessible “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. Notably, the Court rejected the contention that the publication needs to be searchable or indexed to qualify as a printed publication. Id. at 16-17 and 19. In one case, three days of slide presentations between two meetings were enough for the slides to be deemed “printed publications.” Id, citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
The factors that are relevant to determining if a reference is a printed publication include: 1) whether it is addressed to persons of ordinary skill in the relevant art, 2) the breadth of the disclosure, 3) the duration of the disclosure, and 4) expectations of confidentiality. Jazz Pharma. at 17-19.
It is a good practice to file a patent application before disclosing an invention to anyone outside of the company. Then it does not matter if a disclosure is a “printed publication.” If disclosure is required before a patent application can be filed, limit it to what is absolutely necessary for the purposes of the presentation or meeting and make clear that the disclosed information is to be treated in confidence (if the situation allows for it). Calendar a one year deadline to ensure timely filing of a patent application. To the extent possible, keep patent counsel informed of any disclosures of potentially patentable subject matter so that steps may be taken to avoid forfeiting patent protection.