Chemical Engineering April 2019 - 51

cation before the 1980 papers were disseminated.
A publicly available abstract or paper that discloses
the claimed invention more than one year before patent
filing may present a possible problem for U.S. patent
rights, even if the authors do not realize the significance
of their work at the time they write the abstract.
For example, in 2006, the Federal Circuit considered
whether an abstract that the inventors published in the
European Journal of Pharmaceutical Scientists could
be used to invalidate U.S. patent claims owned by
Nichols Institute Diagnostics, Inc. relating to antibodies
for human parathyroid hormone [5]. The inventors
published the abstract in 1994, and later realized the
significance of their work. One year and ten days after
the abstract was published, the inventors filed a U.S.
patent application. A patent issued, and Nichols Institute
Diagnostics subsequently sued Scantibodies Clinical
Laboratory, Inc. in the Southern District of California
for infringement. During the litigation, Scantibodies argued
that the patent claims were invalid based on prior
disclosure in the published abstract. The district court
disagreed, finding that the abstract did not constitute a
public disclosure of the claimed invention because the
inventors did not know the significance of their work
when the abstract was published. On appeal, however,
the Federal Circuit overturned the district court decision,
holding that the patent claims were invalid, because
the abstract disclosed the claimed invention to
the public more than one year before the U.S. patent
application was filed and the significance of the work
was inherent in the disclosure.
Learning from these cautionary tales, scientists
should take steps to ensure that abstracts and papers
describing their inventions are submitted to conferences
and journals or shared with colleagues on a
confidential basis. As an even better course, if practicable,
inventors should consider filing a U.S. patent application
within one year of submitting or sharing their
abstract or paper, or, better yet, before submitting or
sharing their abstract or paper at all if they are considering
global patent protection.
Presentations
Presentations that constitute public disclosure of a
claimed invention more than one year before patent
filing may present a possible problem for U.S. patent
rights. For example, in 1985, the Federal Circuit considered
whether a presentation by the inventors could
be used to invalidate U.S. patent claims owned by the
Massachusetts Institute of Technology (MIT) related to
biological cell cultures [6]. The inventors had presented
their work on microcarriers at the First International Cell
Culture Congress in September 1976. The conference
was attended by fifty to five-hundred cell culturists, and
printed copies of the presentation were distributed to
a number of scientists. One year and two months after
the conference, the inventors filed a U.S. patent application.
A patent issued, and MIT asserted it against AB
Fortia at the International Trade Commission (ITC). The
ITC determined that the patent claims were invalid because
the presentation and handouts constituted public
disclosure of the claimed invention more than one
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Chemical Engineering April 2019

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