The Pitfalls Of Public Disclosure: Protecting the Fruits of Your Research

By Brian P. O'Shaughnessy and Christopher L. North

The patent system provides a means for inventors to protect the fruits of their labors, and thereby attract more funding, talented research assistants, and notoriety. Occassionally, however, an inventor's own acts can destroy the patentability of an invention. Without patent protection, valuable assets and funding opportunities are lost. Here, we look at a few of the pitfalls likely to arise in an academic setting.

INTRODUCTION

First, let's look at the three pillars of patentability: utility, novelty, and nonobviousness. A U.S. patent can only be granted on an invention that is 1) useful, 2) new or not previously known in all of its particulars, and 3) upon consideration of all the relevant literature in a given field, would not have been obvious to one of ordinary skill in that field. Generally, one of ordinary skill is someone who is well versed in the field but does not seek to invent. The utility aspect of patentability is beyond the scope of the present discussion.

The novelty requirement is expressed within the Patent Act, at least in part, as follows: "A person shall be entitled to a patent unless . . . (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States ...." 35 U.S.C. ' 102(b). The Act thus gives inventors a one-year grace period after publication, public use, or an offer for sale to file a patent application. Most foreign jurisdictions, however, do not afford such a grace period such that any public disclosure of the invention prior to filing a patent application will likely preclude patent rights in those jurisdictions.

The novelty requirement, with respect to disclosure by the inventor, is fairly straightforward. It requires that the invention, taken as a whole, has not been made available to the public more than one year before the inventor's filing date. The invention might be made available through conventional publication or public presentation, but can also be made available through private offers for sale, unencumbered transfers of research material ? even between collaborators, or in a thesis.

The nonobvious requirement is more complicated. Here, any of a number of references can be combined to argue that the invention would have been obvious to one of ordinary skill in the art at the time the invention was made. As such, a disclosure of even a part of the invention can create a bar to patentability. For example, a partial disclosure of...