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Patents Corner
Disclosure as a Patent Bar
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by Becky Mahurin
Every university researcher has heard the adage "publish or perish."
Publishing research results provides valuable peer review of your work
as well as a basis for a tenure application. So, why shouldn't you
publish? If there is reason to believe that your work or the work of
one of your students may be patentable, it is advisable for you to
first consult with your university technology transfer professional.
In the United States, one is barred from obtaining a patent on
technology that was publicly disclosed more than a year in advance of
the patent application. In Europe absolute novelty is required. That
means that publication automatically bars one from obtaining patents
in those countries. An exception is made if a U.S. patent filing
occurred prior to the disclosure and that filing is within the last
year. You may then ask, What constitutes a public disclosure? Two
conditions are necessary for the disclosure to be a patent bar: It
must be public, and it must be enabling.
When is a disclosure considered public? A journal article is
considered public on the day the journal is mailed, but not during the
article review period. A thesis is considered public when it is
placed in the library and made accessible.
It is safe to assume that oral presentations, even to only one person,
constitute public disclosures. This kind of disclosure is more
difficult to determine, as it is harder to establish exactly what was
disclosed unless someone in the audience took careful notes or unless
there were handouts. Written confidentiality agreements may be used
when disclosing to small groups or to a contingency from one company.
Providing someone with prototypes or samples is considered a
disclosure if provided for their intended use, not just for further
research or testing. Again, a written confidentiality agreement may
act as a safeguard. The offering of a product for sale, even though
none is actually purchased, is considered a disclosure.
And perhaps of most importance -and danger- to a
university researcher is a court decision stating that information
included in grant proposals can be considered disclosure and, thus,
can act as a patent bar. Grant proposals to federal agencies that are
pending or those that are unsuccessful are not available under the
Freedom of Information Act (FOIA) and, therefore, are not considered
public disclosures. However, successful grant proposals and abstracts
are available as a result of the FOIA. One may mark a proposal as
"confidential" and additionally mark specific pages as "confidential"
or "proprietary." The safest strategy is to eliminate information that
is the basis of a patent, a move that is not always realistic. Not
every proposal will result in patentable technology, but please take
care in areas that have such potential. If in doubt, please consult
me and I will assist you in evaluating the risk of such
disclosure.
Becky Mahurin
Director of the Technology Transfer Office at MSU
© 2000 Montana State University-Bozeman
Discovery January 1995
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