Chemical Engineering April 2019 - 49

You and Your Job
U.S. Patent Rights: Think Twice Before
Disclosing Your Invention
These cautionary tales provide insight that can lead to best practices for scientists
who are seeking patents for their inventions
James M. Eaton and Shana K. Cyr
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
P
ublish or perish is a maxim
in the scientific community,
where scientists are encouraged
to share their work
quickly and often. Scientists spend
considerable time and effort seeking
grants, submitting abstracts to
conferences and scientific journals,
and presenting and publishing their
research. They may also collaborate
with other scientists, discuss their
work with investors, or offer their
products for sale. Although each of
these activities may lead to prominence
or even profits, scientists who
act too soon or share too much create
a risk of forfeiting their own U.S.
patent rights (Figure 1). Cautionary
tales of inventors who have risked
their own U.S. patent rights provide
valuable insight for scientists in developing
their own best practices.
Grant applications
Publicly available information in a
grant application may present a possible
problem for U.S. patent rights.
Although most grant applications
today are submitted and maintained
on a confidential basis, certain information
about federally funded
grants may be accessible through a
request under the Freedom of Information
Act (FOIA). If the information
includes a description of the claimed
invention, and it becomes publicly
available more than one year before
a U.S. patent application is filed, it
may preclude U.S. patent protection
for that claimed invention.
For example, in 2014, the U.S. Patent
and Trademark Office (USPTO)
Patent Trial and Appeal Board (PTAB)
considered whether a University of
Washington inventor's own grant apFIGURE
1. Engineers and scientists who seek patents for their inventions need to understand what precautions
to take in order to secure their intellectual property
plications could be used as a basis
for finding unpatentable his issued
U.S. patent claims related to detecting
analytes in liquid media [1] The
inventor, having obtained grants from
the National Human Genome Research
Institute, then filed a U.S. patent
application more than one year
later. The patent issued and several
years passed. In 2013, Oxford Nanopore
Technologies Ltd. used FOIA
requests to obtain redacted copies
of the grant applications. Oxford then
argued to the PTAB that the patent
claims should be found unpatentable
because the invention was publicly
disclosed in the grant applications
more than one year before patent filing,
as shown in the 2013 versions of
the grant applications. Copies of the
grant applications dated more than
one year before patent filing were
not presented to the USPTO during
the original prosecution of the patent
or to the PTAB during this later
proceeding. The PTAB determined
that the 2013 versions of the grant
CHEMICAL ENGINEERING WWW.CHEMENGONLINE.COM
APRIL 2019
applications did not indicate what
was publicly available more than one
year before patent filing, because additional
information might have been
redacted from the public if FOIA requests
had been submitted back
then. The PTAB thus declined to
find the patent claims unpatentable
based on prior public disclosure. Although
the patent claims were not
found unpatentable in this instance,
this case may have turned out differently
if the PTAB had been presented
with publicly available copies of the
grant applications dated more than
one year before patent filing and they
had disclosed the claimed invention.
This cautionary tale demonstrates
that scientists should take steps to
ensure that their grant applications
are submitted and maintained on a
confidential basis. In addition, out
of an abundance of caution, inventors
should consider filing a U.S.
patent application within one year of
submitting a grant application that
describes the invention, or before
49

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Chemical Engineering April 2019

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