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Volume 3, Issue 2 |
Pitfalls
of publicly disclosing an unpatented invention
By
Marcia Molina, Director, Technology Transfer
University research leads to not only the generation
of important information and knowledge, but also the creation of new intellectual
property having a potential commercial use and value. To encourage this
commercial use and protects its value, ownership rights in the invention
are often sought in the form of a patent or copyright. This article will
discuss two important issues associated with securing patent rights --
public disclosure and obviousness.
Patents may be issued for any new and useful process,
machine, manufacture or composition of matter, or any new and useful improvement
thereof. However, the right to patent an invention can be lost as
a result of certain activities.
Public Disclosure
Of particular relevance to those in an academic
setting is the effect of public disclosure on patent rights.
In the United States if the invention has
been described in a printed publication anywhere, or has been in public
use or on sale in this country more than one year prior to the date on
which an application for patent is filed in this country, a patent cannot
be obtained.
This publication or description must be “enabling”
meaning it must describe the invention with enough detail to enable one
who is skilled in the art to practice the invention.
In this connection it is immaterial when the
invention was made, or whether the printed publication or public use was
by the inventor or by someone else. If the inventor describes the invention
in a printed publication, uses the invention publicly, or places it on
sale, he or she must apply for a patent before one year has gone by, otherwise
any right to a patent in the United States will be lost.
While the United States offers inventors a
one year grace period to file a patent application following a public disclosure
of the invention, this is not the case in foreign countries. Outside the
United States the inventor is required to file a patent application prior
to the date of any public use or disclosure to preserve patent rights in
those countries.
Obviousness
In general, even if the inventor does not
publish an enabling description of the invention prior to filing a patent
application, a public disclosure relevant to the subject matter of
the application can become part of the “prior art” which will be evaluated
when examining a subsequent patent application.
Although the subject matter to be patented
is not exactly shown by the prior art, it must be sufficiently different
from what has been used or described before so it may be said to be non-obvious
to a person having ordinary skill in the area of technology related to
the invention. Printed publications and other public disclosures,
even if not enabling, may contribute to the prior art to a sufficient degree
to raise issues regarding the obviousness of an application.
In summary, inventors who wish to protect
the commercial value of an invention by securing a patent must be aware
of the potential loss of the right to file that may result from a public
disclosure of the invention prior to filing a patent application.
The loss of the right to file may result either directly from the enabling
disclosure or indirectly via a contribution to the prior art in the field,
which results in a subsequent finding of obviousness by the patent examiner.
Helpful patent information on the Web
Council on Governmental Relations
Fish & Richardson P.C.
Do’s
& Don’ts for keeping lab notebooks
Do’s
& Don’ts for keeping e-lab notebooks
What
is a patent
U.S. Patent and Trademark Office
Home page
General
information concerning patents
Independent
Inventor Resources
