The University of Denver subscribes to the innovation model for technology transfer where inventors are given substantial incentives to carry out the innovation and help move it forward. If you have questions regarding patents at the University of Denver, please contact the Technology Transfer Office either by telephone (303-871-4230) or email ( firstname.lastname@example.org ).
Patenting and Publishing
LOSS OF PATENT RIGHTS BY PUBLICATION AND DIVULGATION
Generally well known is the fact that a publishing inventor has a grace period of one year following release of an enabling printed publication to file a U.S. patent application. Less well known are the laws of most foreign countries which foreclose any possibility of patenting following public divulgation.
WHAT IS LOST?
An inventor forfeits rights to a U.S. patent if an enabling printed publication is released more than one year prior to the time a U.S. patent application is filed.
Requirement of "enabling"
- Publication must describe the invention in sufficient detail and specificity to enable a person of ordinary skill in that art at that time, to make, construct and practice the invention without an unreasonable amount of experimentation.
- Publication need not describe details which would be obvious to one skilled in that art at that time.
- In the case of a new chemical compound described by name or structural formula, the publication is not enabling unless a method of making the compound is either described in the publication or obvious to one skilled in that art at that time. However, a subsequently published method of making the compound can render the originally nonenabling publication enabling as of the date of the subsequent publication.
Requirement of "printed"
- Under U.S. law, oral disclosures per se have no effect, even when accompanied by slide presentation.
Publication must be in a tangible form customarily used in making a large number of copies.
- Handwritten documents generally do not qualify as "printed." Exception to this qualification is made where document is in a language which is characteristically handwritten due to its pictorial style and vast number of characters, e.g., Japanese.
- Drawings in readily reproducible form qualify as "printed."
- Typewritten documents qualify as "printed."
- Microfilms and slides themselves qualify as "printed," but their mere projection on a screen (e.g., accompanying an oral presentation) does not.
Requirement of "publication"
- Document must be made publicly available and accessible, at least to that segment of the public skilled in the art or trade to which the invention relates.
- Degree of public accessibility and dissemination required to qualify as "
publication" depends upon the type of documents in question and the circumstances of their distribution.
Documents of limited circulation which have been held to qualify as "publications."
- Single copies of books, periodicals, university theses and dissertations, microfilms and slides deposited and shelved in a public library, provided that they have been properly catalogued or indexed.
- Preprints or printed abstracts of scientific or technical papers distributed to participants at a scientific or technical meeting.
- Documents circulated among a rather limited number of commercial organizations without any confidentiality agreement or restriction on their use of the document.
- Manufacturers' catalogs, brochures, flyers, leaflets, and the like, distributed generally to the relevant trade.
Documents of limited circulation which have been held not to qualify as "publications."
- Documents circulated among a limited number of commercial organizations on a confidential basis, either expressed or implied.
- Reports of private or semiprivate research institutes that are intended for those purchasing their services, but not for general distribution.
- Intracompany documents, no matter how large the company, and no matter how widespread the internal circulation (e.g., the U.S. government).
- Government documents which are either expressly classified or implicitly restricted by reason of limited governmental or contractor circulation.
LOSS OF PATENT RIGHTS BY DIVULGATION
What is divulgation?
Divulgation can be interpreted as any nonconfidential disclosure of the critical aspects of an invention by means of a written or oral description, by use, or in any other way. Merely displaying the invention, where the critical features of the invention are readily discernible, will amount to divulgation. Distributing samples of the invention (e.g., a compound), where the critical features of the invention are discoverable by analysis, will amount to divulgation, even if it could be proven that analysis had never actually taken place.
WHAT IS LOST?
Under foreign laws (most countries other than the U.S.), an inventor forfeits rights to patents if the invention is divulged prior to filing a U.S. patent application. Under these foreign laws "divulgation" has a much broader interpretation than "printed publication" under U.S. law.
EFFECTS OF DIVULGATION
Divulgation of an invention prior to filing a U.S. patent application will result in loss of right to file patents in most foreign countries.
HOW DO I PRESERVE MY PATENT RIGHTS AND STILL PUBLISH OR TALK ABOUT MY WORK?
Simply file a U.S. patent application before you publish or divulge your invention.
You may publish or talk about your invention after you have filed a U.S. patent application and not forgo any foreign patent rights. However, you must file corresponding foreign patent applications on this invention within one year of the date of your U.S. application.
You can publish and protect the commercially valuable parts of your research by:
- Planning ahead
- Coordinating publication-divulgation with patent filing
- Preparing and submitting disclosure of your invention as early as possible
Patent protection is essential to successful commercialization of many inventions.