Public Disclosure Can Lead to Loss of US and Foreign Patent Rights
In the U.S., the publication, public use, offer for sale, or sale of an invention anywhere in the world is known as a barring event, because if a year passes between one of these events and the date when a patent application is filed on the invention, the inventor is barred from patenting the invention. The one-year anniversary of a publication, public use, sale, or offer for sale, is commonly referred to as a bar date. After this date passes, the inventor cannot receive a patent on the invention.
For foreign patents, no grace period exists. The publication, public use, offer for sale, or sale of an invention immediately bars you from foreign patent rights.
If you are planning to present your research at a conference, publish a paper, or otherwise publicly disclose your invention, talk with someone at WARF prior to the presentation to learn about ways to protect your patent rights.
• What constitutes a Public Disclosure
It is very easy to do something that constitutes publication or public use without realizing it. While the patent statute refers to "printed publication" as the barring event, this term is interpreted very broadly. It includes any printed, photocopied, typed, microfilmed or otherwise fixed communication. Not only conventional academic publications but also abstracts, master's theses, Ph.D. dissertations, presentation overheads, poster sessions and even tape recordings of speeches are all considered printed publications once they are delivered to subscribers, distributed at a meeting, shelved and cataloged in a library, etc.
While the U.S. provides a one-year grace period after publication, public use, sale, or offer for sale, most foreign countries have no such grace period. Furthermore, even oral disclosures can have the same effect in foreign countries as publications.
This discussion of prior art and barring events is only a summary overview. The law includes various exceptions, and a seemingly common term, such as "printed publication", may have a special meaning. Thus, it is vital to tell the attorney drafting your patent application about any possibly barring event or prior art for two reasons:
1) Only if fully informed can the attorney make the best possible case for your patent. Good patent claims can sometimes still be made even though the disclosed material is prior art.
2)Deliberate failure to notify the Patent Office of prior art relevant to an application can make the patent invalid.
• Contact WARF if you are planning or have made a public disclosure
WARF suggests bringing your invention to WARF at earliest possible date, preferably before any public discussion of the technology, to obtain the maximum benefit from U.S. and international patent laws.
WARF needs some lead-time to consider a disclosure and, if accepted, draft an application. A total of three months is preferred, although accelerated handling is possible in some circumstances. Therefore, you should consider a disclosure to WARF at the same time you are preparing a manuscript for submission to a journal or are planning a poster session or public seminar. This also applies to dissertations being readied for submission to the library, abstracts, and other disclosures not usually considered "publications" for academic purposes.
The above public disclosure rules apply only to patents. Different rules apply to copyrights, biological materials and other intellectual property. Give your WARF intellectual property manager a call if you have any questions.
Please note that if your research is supported in whole or in part by federal funding, you likely have an obligation to make a disclosure of the technology to WARF prior to any public disclosures.