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Points to consider when publicly disclosing research or discoveries prior to filing a patent application
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Welcome to the inaugural Intellectual Property Update. On a monthly basis, Intellectual Property Update will provide content related to an intellectual property topic of interest to physicians, health care professionals and companies in the medical profession.
Physicians are routinely at the forefront of innovation, whether in a research capacity or developing novel solutions to challenges faced in patient care. As a result, physicians are frequently listed as inventors on patent applications filed in the United States and abroad, either in their individual capacity or on behalf of universities or companies. Prior to such patent application filings, physicians are commonly called upon to share their inventions through presentation at a medical conference, publishing in a medical journal, demonstrating a product or technique, and other means of public dissemination.
In some circumstances, the opportunity to obtain a patent may be implicated by such public disclosure of the invention. Many universities and companies employ protocols to safeguard against loss of patent rights by public disclosures, but it is also important and useful for physician-inventors to understand the potential consequences.
Generally, any patent or printed publication, or evidence of an invention being in public use, on sale or otherwise available to the public before the date of filing a patent application will be considered “prior art” and can be used against a patent application as evidence that the invention does not satisfy the legal requirements of being new (novel) and not obvious (non-obviousness). However, the patent laws of the United States provide a 1-year grace period following a public disclosure by an inventor (or joint inventors) to file a patent application such that the public disclosure will not constitute prior art. The policy behind the 1-year grace period generally seeks to strike a balance between allowing some commercial evaluation of the invention before filing and encouraging prompt and widespread disclosure of the invention through filing.
On its face, the 1-year grace period seems relatively straightforward: Should patent protection be desired, file for a patent application within 1 year of any public disclosure. There are a few caveats. First, if a third-party builds upon or otherwise modifies the invention originally disclosed by the inventors, a public disclosure of the supplemented or modified invention may preclude the inventors from obtaining a patent to the original invention. This may not be uncommon in competing research endeavors. Second, the grace period is personal to the inventor or joint inventors. Should a university or company plan on relying on the grace period exception to obviate an earlier public disclosure, it must be able to show the disclosure is attributable to the inventors.
In modern technological environments with several physicians collaborating in research and development across different disciplines and between different hospitals, universities, companies, etc., these caveats are not as obscure as one may think. Moreover, if precautions are not taken to avoid these caveats, then some or all the potential patent rights may be compromised. Given the above discussion, filing a patent application prior to any public disclosure, to the extent possible, is typically recommended. Otherwise, it is important to track all public disclosures, and if applicable, coordinate amongst collaborators to ensure potential patent rights are preserved to their fullest extent. There are also additional incentives to not rely on the 1-year grace period — certain countries outside the United States offer less or no grace period, such that any public disclosure could compromise patent rights in that foreign jurisdiction. – Paul S. Mazzola, JD
If you would like to request a discussion of any specific topic involving patents, trademarks, copyrights or trade secrets, please email PMazzola@howardandhoward.com.
Disclosure: Mazzola reports no relevant financial disclosures. This article is for informational purposes and is not intended to constitute legal advice.