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Patents Corner
Disclosures over the Internet
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by Becky Mahurin
The information published on the World Wide Web and through the Internet is helpful to many scientists and researchers. One can access information that may not be otherwise published. Also, there is now an electronic bulletin board on which scientists in some areas can post draft articles for review by colleagues. All these, at first glance, seem to give researchers some valuable tools with no downside. But is there a downside?
As I have previously discussed, it is most advantageous to have a patent on file prior to public disclosure of potentially patentable information. In the United States, one is allowed one year after disclosure to file a patent. But, if disclosure occurs before a U.S. patent is filed, the ability to file foreign patents is lost. We come back to the issue of electronic publishing of pre-prints of journal articles or of early posting of abstracts for an upcoming conference. As posting of draft articles on electronic bulletin boards is the prerogative of the PI, then it is easier to control. Researchers should avoid such postings if there is a question of patenting any information included in that article.
The downside to information disclosed by conference organizers or journal editors becomes obvious. It may jeopardize the patenting status of an idea. And it may do so without the knowledge of the author/speaker. If an author is notified that such publication will occur, it is important for him or her to consider whether such publication will impact any efforts to patent. But, not all journals or conference organizers yet understand the ramifications for patenting. Thus, not all authors are notified in advance that such prepublication will occur. You and I may be working to file a patent with no knowledge of disclosure of this information.
Remember that for a disclosure to bar patenting, it must be enabling. If the information posted on the Web is not fully enabling to one skilled in the art, then such disclosure is not a bar. We in technology transfer can help you evaluate this.
But the best advice, when dealing with material that is the subject of patenting efforts, is to ask the journal editor or conference manager if they intend to prepublish material. You should always notify the TTO Office that articles and abstracts have been submitted. This gives us the opportunity to file an early patent or correspond with the appropriate organization to ensure that early disclosure does not occur.
If you have any questions, please call me at 994-7868.
Becky Mahurin
Director of the Technology Transfer Office at MSU
© 2000 Montana State University-Bozeman
Discovery January 1996
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