Chemical Engineering April 2019 - 52

year before patent filing. On appeal,
the Federal Circuit agreed.
As with abstracts and papers,
whether a presentation constitutes a
prior public disclosure of the claimed
invention is often a fact-intensive
inquiry. It may turn on who had access
to the presentation, whether
the access was confidential, and
what the audience could learn about
the claimed invention from the presentation.
For example, in 1981, the
U.S. District Court for the District of
New Jersey considered whether a
presentation by the inventors could
be used to invalidate U.S. patent
claims owned by the Regents of
the University of California related to
prosthetic knees [7]. The inventors
had presented lectures about their
work to approximately thirty physicians
at the 101st Annual Session of
the California Medical Association in
1972. One year and two days later,
the inventors filed a U.S. patent application.
The patent issued, and the
Regents of the University of California
subsequently sued Howmedica,
Inc. in the District of New Jersey for
infringement. During the litigation,
Howmedica argued that the patent
claims were invalid based on prior
disclosure during the 1972 lectures.
The district court disagreed, reasoning
that even though the audience
was not asked to keep the information
confidential, the slides were projected
only temporarily and did not
adequately disclose how to make
and use the claimed invention. Although
the Regent's claims were not
invalidated in this instance, this case
may have turned out differently if the
court had found, for example, that
the slides had been projected for
additional time or that they provided
more information about the invention.
This risk to the patent claims
could have been avoided if a U.S.
patent application had been filed before
the presentation.
As another example, in 2004, the
Federal Circuit considered whether a
presentation by the inventors at two
different meetings precluded them
from obtaining U.S. patent protection
[8]. The inventors had presented
their research relating to cholesterol
at a meeting of the American Association
of Cereal Chemists (AACC) and
at an Agriculture Experiment Station
(AES) at Kansas State University in
52
FIGURE 3. Scientists should avoid demonstrations of and communications about their inventions, especially
in informal settings
1998. The presentations involved
displaying a poster with fourteen
printed slides for about three days
total. About two years later, the inventors
filed a U.S. patent application.
The USPTO examiner rejected
the claims based on prior disclosure
of the claimed invention at the two
meetings. The inventors appealed
to the USPTO Board, which agreed
with the examiner, and then to the
Federal Circuit, which also agreed
with the examiner. The Federal Circuit
reasoned that the presentation
was a prior public disclosure of the
claimed invention because the inventors
displayed their poster for about
three days to a target audience
of cereal chemists, the audience
was not precluded or discouraged
from taking notes or photographs,
and only a few slides on the poster
needed to be copied for the claimed
invention to be captured.
A presentation does not need
to involve the inventor to present
a possible problem for U.S. patent
rights. For example, in 2016,
the USPTO considered whether a
presentation by an undergraduate
student could be used to invalidate
U.S. patent claims owned by the
University of Washington relating to
detecting analytes in liquid media
[9]. The student had presented
work from the laboratory at a 2007
University of Washington undergraduate
poster session. Several
years later, the University of Washington
filed a U.S. patent application
related to the work. The patent
issued, but Oxford Nanopore
Technologies Ltd. subsequently
petitioned the USPTO to find the
issued patent claims unpatentable
based on prior disclosure in the
undergraduate poster presentation.
The USPTO Board disagreed,
concluding that the presentation
was not a public disclosure of the
claimed invention because the
poster session included a broad
range of topics and that the viewers
were primarily affiliated with the
students. Although the University of
Washington's claims were not found
unpatentable in this instance, this
case may have turned out differently
if the Board had determined,
for example, that the posters were
all related to the subject matter of
the invention or if the audience included
more scientists in the field.
This risk to the claims could have
been avoided by filing a U.S. patent
application before the presentation.
Learning from these cautionary
tales, scientists should keep their
presentations as confidential as possible,
for example, by asking that
audience members not take notes
or photographs and by displaying
slides only temporarily, especially if
the target audience includes scientists
in the same field as the invention
(Figure 2). In addition, out of
an abundance of caution, inventors
should consider filing a U.S. patent
application within one year of presenting
their work, or before presenting
their work at all if they are
considering global patent protection.
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Chemical Engineering April 2019

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