IP Corner

The America Invents Act: Public Disclosure in a University Setting

J. Rhoades White, Jr., a patent lawyer with Dority & Manning, P.A., fills us in on the finer points of the Leahy-Smith America Invents Act

Just to frame the issue, patents are granted for new and useful inventions, such as machines, articles of manufacture, processes, or improvements thereof. By contrast, copyrights protect works of authorship (e.g., writings, music, or works of art) and trademarks cover words or phrases that identify the source of certain goods. If a patent is granted, the patentee is given exclusive rights to practice the invention for the term of the patent, which is generally twenty years from the earliest filing date of the patent application. In exchange for the exclusive rights that are enjoyed by the patentee, the United States Patent and Trademark Office (“U.S.P.T.O.”) requires an applicant to fully disclose the invention, such that when the period of exclusivity expires the public will have full use of the invention. As part of this social contract between the applicant for a patent and the U.S.P.T.O., the U.S.P.T.O. additionally requires the applicant disclose the invention in a timely fashion. Although this requirement has changed with the enactment of the Leahy-Smith America Invents Act, this is basically where the “public disclosures” come into play. As is codified in 35 U.S.C. § 102, in the United States, once the inventor has publicly disclosed the invention, they are given one year to file a patent application covering the invention before patentability of the invention is precluded. However, in other foreign countries, the inventors are not allowed this one year “grace period,” and in such countries patentability of an invention is precluded immediately upon publicly disclosing the invention. Moreover, in the United State or abroad, if another person files a patent application based on your public disclosure prior to your filing of a patent application covering the same, you will have an uphill battle to prove you are the true inventor. Accordingly, it is imperative that any disclosures relating to the invention are handled carefully such that the patent rights are preserved. The following are a few commonly asked questions with regards to the above:

1. What exactly is a “publication” or “public disclosure” according to patent law?

Any published document available to the public will be a “public disclosure.” Moreover, a public disclosure may include any non-confidential form of disclosure regarding the invention. This may include written disclosures, such as books, articles, grant proposals, etc., as well as oral disclosures, such as a speech at a seminar or a public meeting. For written disclosures, there is no minimum number of printed copies that must be distributed before the disclosure arises to a public disclosure. For example, a limited number of handouts provided at a public meeting, distributed without restrictions, would be considered a public disclosure. By contrast, however, a large number of handouts marked “Confidential” and distributed only within a company or organization (such as to certain faculty members at a University) likely would not be a public disclosure. Generally, the rule is that the information is a public disclosure if the information is “available” to the public, i.e., as soon as an interested party could obtain the information if they wanted to.

2. How much information may I share in a public disclosure before it affects patentability?

You can share broad, generalized information about your invention (e.g., “I have an invention to improve the battery life in a car.”). In order for a disclosure to negatively affect the patentability of your invention, it must generally be an “enabling” disclosure. That is, it must teach a person having ordinary skill in the art how to practice the invention. However, any aspect of your public disclosure may be cited against you by the U.S.P.T.O. or used later by a third party to invalidate your patent, and with certain inventions, information as broad as the title of the invention may be considered an enabling disclosure. Accordingly, it is best to err on the side of safety with public disclosures, and it is therefore highly recommended that any inventor at Clemson University consult with a representative of Clemson University Research Foundation’s Technology Transfer Office[JRW1] before making any public disclosure related to an invention.

3. What are the ramifications of a public disclosure in patent law?

Public disclosures may preclude patentability of your invention in the United States if made more than one year prior to the filing date of your patent application. However, certain foreign countries are less forgiving. In these countries, a public disclosure of your invention may immediately preclude patentability of your patent application. Notably, even if your public disclosure was not cited by the U.S.P.T.O and your patent issues (although you have a duty to disclose to the U.S.P.T.O. anything material to patentability), your patent may be later challenged and invalidated by a third party with evidence of the public disclosure. This is a harsh, and expensive, consequence.

4. As a researcher, what steps should you take prior to a public disclosure in order to preserve patentability?

Before any disclosure of your invention, it is highly recommended that you discuss the circumstances of the disclosure with a representative of Clemson University Research Foundation’s Technology Transfer Office. In certain situations, it is possible to file what is known as a “Provisional” patent application without complying with all the formalities of a “Non-Provisional” patent application. Provisional patent applications may generally be prepared more quickly and, depending on the extent of your disclosure, will be enough to secure a filing date prior to your disclosure. Additionally, you may take steps to ensure your disclosure is not “public.” For example, if your disclosure will be to a limited number of persons, you could have them each sign a confidentiality agreement, or non-disclosure agreement, and mark any written disclosures provided as “Confidential.”

5. What is the definition of “prior art”? How does this definition differ in domestic vs. international patent law?

Prior art refers the entire body of knowledge that was available prior to the priority date (e.g., filing date) of your patent application. Generally, however, the relevant prior art refers to any evidence available prior to your priority date that your invention is obvious or not novel. This evidence may include printed publications published prior to the filing date of your patent application, patents or patent applications filed prior to the filing date of your patent application, and any other evidence that your invention was on sale offered for sale, or otherwise available to the public prior to the filing date of your patent application. This evidence may further include any public disclosures made more than one year prior to the filing date of the application. This one year period is often referred to as the “grace period” to file a patent application before an inventor’s public disclosure may be considered prior art. Though as will be discussed below, certain foreign countries do not provide for this one-year grace period.
With regards to the patentability of your invention in the United States, domestic and foreign prior art may be cited against you by the U.S.P.T.O. Similarly, when you file an application in foreign countries, both domestic and foreign prior art may be cited against you as well.

6. How can a conversation amongst colleagues create “public disclosure”? (this applies to members of a lab group, e.g., undergrads, grad students, post-docs, etc.)

Unfortunately, there is no bright line rule for when a discussion becomes “public.” However, discussions between, for example, members of a lab group, co-inventors, graduate students or post-doctoral students conducting research related to your invention likely will not arise to a public disclosure if you’re careful. In these situations, certain steps should be taken to ensure the confidential nature of the discussion is clear. For example, any conversations or meetings should only be open to university faculty, staff, and students, or only to the members of the particular group. This “closed” meeting policy should be announced or advertised with the announcement or advertisement for the meeting. Additionally, during the meeting, it should be made clear to the participants that all discussions and disclosures provided are strictly confidential. This should also be made clear on any written disclosures provided in such a meeting by clearly marking the disclosures as “Confidential.”
The safest option, however, would be to have any non-inventor or any person not under a duty of confidentiality execute a confidentiality agreement or a non-disclosure agreement covering the discussions. Additionally, for any written disclosures, you would want to clearly and conspicuously mark the disclosure as “Confidential.”

7. When do dissertations and theses become public disclosures, and what steps should be taken to avoid publically disclosing these documents?

Dissertations would be considered a public disclosure as soon as they are “available” to the public, i.e., as soon as an interested party could obtain the information if they wanted to. This does not mean readily available or available online. A dissertation that has been catalogued in the library at Clemson would be considered a public disclosure.

8. Do posters in public university hallways qualify as public disclosures?

Posters in a public university hallway would likely qualify as a public disclosure. Presumably, these hallways would be available to the public (the “public” here likely including university students), and an interested party (e.g., a student) would have access to the information if they wanted it.

9. What are the basic steps required in order to protect your invention?

It is generally a best practice to file a patent application covering your invention prior to a public disclosure. This is the best way to ensure the public disclosure will not negatively affect your patent rights in the United States or abroad. It should be noted that ideally several months should be allowed for the preparation of a patent application. Thus, it is best to consult with a representative of Clemson University Research Foundation’s Technology Transfer Office well in advance of any planned disclosures (e.g., publications, seminars, etc.). However, it is possible to prepare them much more quickly if necessary.
Additionally, or alternatively, steps may be taken to ensure the disclosure would not be interpreted as a “public” disclosure. For example, as discussed above, if the disclosure is to a limited number of persons, you could have each person sign a confidentiality or non-disclosure agreement covering your invention and the disclosure, and mark any written disclosures provided as “Confidential.”

Click here to visit Rhoades’s personal webpage.
If you have other questions regarding public disclosures or anything else related to IP, email us at contactcurf@clemson.edu.

Author: Evan McConnell

Date Written: May 2014