Chemical Engineering April 2019 - 50

submitting a grant application at all
if they are considering global patent
protection, since not all jurisdictions
have the one-year grace period.
Abstracts and papers
Abstracts and papers that are shared
or maintained on a non-confidential
basis may present a possible problem
for U.S. patent rights. As with
grant applications, if the abstract or
paper describes the claimed invention
and becomes publicly available
more than one year before a U.S.
patent application is filed, U.S. patent
protection for that claimed invention
may be precluded.
For example, in 1963, the USPTO
considered whether an inventor's
submission of an advanced proof of
a paper to a symposium precluded
the inventor from obtaining a U.S.
patent relating to distillation of volatile
chlorides [2]. The inventor submitted
an advanced proof of a paper to the
Institution of Mining and Metallurgy
for discussion at a symposium to
be held at the Royal Society of the
Arts in London in 1956. The Institution
provided copies of the paper
to the symposium registrants and
attendees, and when the inventor
applied for a U.S. patent more than
one year later, the examiner rejected
the claims over the advanced proof
of the symposium paper. The inventor
appealed, but the USPTO Board
agreed with the examiner. It held that
the prior disclosure in the advanced
proof of the paper constituted public
disclosure of the claimed invention
more than one year before patent filing,
and U.S. patent protection was
thus precluded.
Whether an abstract or paper constitutes
a public disclosure is often a
fact-intensive inquiry that may turn
on the evidence presented. For example,
in 2004, the U.S. Court of
Appeals for the Federal Circuit considered
whether a meeting abstract
could be used to invalidate U.S.
patent claims owned by Norian Corporation
related to tooth and bone
repair [3]. The inventor had submitted
an abstract for a meeting of the
International Association for Dental
Research (IADR) in 1991. More than
one year later, Norian filed a U.S.
patent application. The patent issued
and Norian subsequently sued
Stryker Corporation in the Northern
50
FIGURE 2. To keep presentations as confidential as possible, audience members may be asked to not
take notes or photographs
District of California for infringement.
During the litigation, Stryker
argued that the patent claims were
invalid based on prior disclosure in
the IADR abstract. The district court
disagreed, finding that the abstract
was not disseminated at the IADR
meeting and was thus not a prior
public disclosure of the claimed invention.
In making this finding, the
district court relied on one presenter's
testimony that he could not recall
whether copies of the abstract
were available to attendees, and the
other presenter's testimony that no
one asked him about the availability
of the abstract. On appeal, the Federal
Circuit affirmed. While Norian's
claims were not invalidated in this
instance, this case may have turned
out differently if the court found, for
example, that the presenters or the
IADR had distributed copies of the
abstract to attendees. Filing a U.S.
patent application before submitting
the meeting abstract would have
avoided this risk to the claims.
As another example, in 2009, the
Federal Circuit considered whether a
paper that the inventor shared with
coworkers could be used to invalidate
U.S. patent claims owned by
Cordis Corporation related to stents
[4]. The inventor was a medical resident
who prepared a paper in 1980
relating to his work with stents. He
provided copies of the paper to
about six of his teachers, and orally
presented it to them and several
other colleagues. The inventor later
gave copies of the paper to Vascor,
Inc. and Shiley, Inc. while trying to
commercialize his stent technology.
The agreements between the inventor
and the two companies did not
require confidentiality, and the Shiley
agreement specifically stated that
Shiley was not required to keep the
information secret. In 1983, the inventor
joined the faculty at the University
of Texas, San Antonio, and
provided copies of a revised version
of his paper to a doctor and technician
there, and to the university as
part of a research proposal. About
two years later, the inventor filed a
U.S. patent application. A patent issued,
and Cordis subsequently sued
Boston Scientific Corporation in the
District of Delaware for infringement.
During the litigation, Boston Scientific
responded that the patent claims
were invalid based on prior disclosure
in the 1980 and 1983 papers.
The district court disagreed, and on
appeal, the Federal Circuit affirmed.
The Federal Circuit held that the papers
were not public disclosures of
the claimed invention because there
were expectations of confidentiality
between the inventor and the individuals
receiving copies.
Although
Cordis's claims were not invalidated
in this instance, this case may have
turned out differently if the court had
determined, for example, that some
of the recipients were not expected
to keep the paper confidential. This
risk to the claims could have been
avoided by filing a U.S. patent appliCHEMICAL
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Chemical Engineering April 2019

Table of Contents for the Digital Edition of Chemical Engineering April 2019