I was recently reminded about how easy it is to lose patent rights due to a miscalculated publication. Since I regularly represent universities and other research institutions in patent matters, I’m very familiar with publication pressure felt by faculty and students and the inherent rush to be the first to present findings to peers. I made many of these types of presentations myself as a graduate student.

Last month, I had a researcher who did all the things necessary to protect his invention, or so he thought. While the inventor knew enough to submit the invention for filing prior to publication in a journal, it came to light that the invention was disclosed by the inventor and his student a month earlier in a poster presentation at a conference. As you may know, a case this past fall illustrated the dangers of prior publications in the In re Klopfenstein decision.

Get the complete opinion here: Download file

In In re Klopfenstein, the inventors applied for a patent on October 30, 2000. Their patent application, Patent Application Serial No. 09/699,950 (the ‘950 application), disclosed methods of preparing foods comprising extruded soy cotyledon fiber. The ‘950 application claimed that feeding mammals foods containing extruded SCF may help lower their serum cholesterol levels while raising HDL cholesterol levels.

However, in October 1998, the inventors presented a printed slide presentation at a meeting of the American Association of Cereal Chemists (“AACC”). The fourteen-slide presentation was printed and pasted onto poster boards. The printed slide presentation was displayed continuously for two and a half days at the AACC meeting. In November of 1998, the same slide presentation was put on display for less than a day at an Agriculture Experiment Station (“AES”) at Kansas State University. The poster presentation presented to the AACC and at the AES in 1998 disclosed every limitation of the invention disclosed in the ‘950 patent application.

The court noted that neither presentation contained a disclaimer or notice to the intended audience prohibiting note-taking or copying of the presentation. No copies of the presentation were disseminated either at the AACC meeting or at the AES, and the presentation was never catalogued or indexed in any library or database.

The examiner found all of the claims anticipated by this reference or obvious in view of it and other references. The inventors argued that this reference was not a “printed publication” because no copies were distributed and because there was no evidence that the reference was photographed. The examiner rejected these arguments and issued a final office action rejecting the claims of the ‘950 application. The inventor’s appealed the examiner’s decision but the Board of Appeals affirmed on the grounds that the full invention of the ‘950 application was made publicly accessible to those of ordinary skill in the art by the this reference and that this introduction into the public domain of disclosed material via printed display represented a “printed publication” under 35 U.S.C. § 102(b).

In its decision, the court stated that “distribution and indexing are not the only factors to be considered in a §102(b) ‘printed publication’ inquiry.” The court looked at the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.

Finally, the court held that:

Upon reviewing the above factors, it becomes clear that the Liu reference was sufficiently publicly accessible to count as a “printed publication” for the purposes of 35 U.S.C. § 102(b). The reference itself was shown for an extended period of time to members of the public having ordinary skill in the art of the invention behind the ‘950 patent application. Those members of the public were not precluded from taking notes or even photographs of the reference. And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed—particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information. For these reasons, we conclude that the Liu reference was made sufficiently publicly accessible to count as a “printed publication” under § 102(b).

After reviewing this case, I had to wonder whether or not it would have saved the application if the inventors had just included a statement on the poster presentation to the effect of “Proprietary Materials. Copying of any information contained herein is strictly prohibited.” I would argue yes given that the court made a point of stating that the inventors should have taken protective measures … even a simple disclaimer informing members of the viewing public that no copying of the information will be allowed or countenanced.”

The court made a big deal about how long the poster was accessible stating that “The duration of the display is important in determining the opportunity of the public in capturing, processing and retaining the information conveyed by the reference. The more transient the display, the less likely it is to be considered a “printed publication.” … Conversely, the longer a reference is displayed, the more likely it is to be considered a “printed publication.”

This doesn’t leave researchers with very clear guidance. Since it seems that the inventors in In re Klopfenstein left their poster on display too long, it begs the question as to how many minutes or hours are still transient. Had the presentation been only the “less than a day” display at the AES conference, would that have been OK? Several hours? Fifty-seven minutes? Without any clear guidelines, researchers should be on notice that anything beyond a very “transient” slide presentation should be approached with caution.

I just wanted to pass along the information as an FYI. While faculty and students will always want to present their research in abstracts, posters and papers, I think it would be valuable to advise them to err on the side of caution. It could be living dangerously but one might want to try to (a) omit critical details from any such poster presentations to keep them from being enabling in a patent sense, (b) limit presentations to as little time as possible, and (c) add a disclaimer that the materials are proprietary and copying if strictly forbidden.

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