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DBL%20Hendrix%20small.png College chemistry, 1983

Derek Lowe The 2002 Model

Dbl%20new%20portrait%20B%26W.png After 10 years of blogging. . .

Derek Lowe, an Arkansan by birth, got his BA from Hendrix College and his PhD in organic chemistry from Duke before spending time in Germany on a Humboldt Fellowship on his post-doc. He's worked for several major pharmaceutical companies since 1989 on drug discovery projects against schizophrenia, Alzheimer's, diabetes, osteoporosis and other diseases. To contact Derek email him directly: Twitter: Dereklowe

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November 15, 2004

Keep It To Yourself

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Posted by Derek

I've mentioned how patentability can be ruined by any sort of prior publication, but - since we're talking about the law, after all - there's always room to argue about what a "publication" might be. That's been clarified a bit by the recent In re Klopfenstein decision, available herein all its legal glory as a Word document.

Carol Klopfenstein and John Brent filed an application in 2000 for a method to lower cholesterol and increase HDL by including soy cotyledon fiber in food. They appear to have had an improved method for producing and using the substance. No problem there - patents are filed all the time for methods like that - but it turned out that their invention had been the subject of a poster presented at the American Association of Cereal Chemists meeting in 1998. The poster had no printed handouts to go along with it, and was displayed for about three days. Unlike many such poster sessions at meetings, it wasn't catalogued or indexed in any publication. Later that year, the same poster was displayed for an afternoon at Kansas State.

And on that basis, the PTO turned down their application, saying that this was a public presentation. Klopfenstein and Brent appealed the examiner's decision, but it was no dice. Said the court:

"The factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied. . .Upon reviewing the above factors, it becomes clear that the (poster) was sufficiently publicly accessible to count as a "printed publication". . .The reference itself was shown for an extended period of time to members of the public having ordinary skill in the art of the invention behind the '950 patent application. Those members of the public were not precluded from taking notes or even photographs of the reference. And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed-particularly given the amount of time they had to copy the information and the lack of any restrictions. . ."

This doesn't surprise me, because in the drug industry there's no way that we would show a poster on anything before the patent application had been filed. We err on the side of caution. But if you're an inventor and wants to live dangerously, there are still ways to be a disclosure daredevil: for example, if this poster had only been displayed for an afternoon, it might well not have counted. A disclaimer that they didn't want the information on it copied would have done the trick, although I have to say I've never seen one of those in a poster session. And if the key data had been buried inside the presentation in a way that was difficult to comprehend and copy (and man, have I ever seen some posters that fit that description), that might have slipped by, too. But it was out there too long, too openly, and with no reason for anyone not to copy it.

That hasn't stopped some law firms from issuing ominous-sounding releases about how the courts are trampling on the patent rights of individuals. But that's ridiculous. Here's a free clue: if you want to patent something, you should avoid writing it on a big piece of posterboard and showing it off to anyone who walks by.

I do have one question, though, which I haven't seen answered in any of the accounts of this case that I've read: how was the AACR poster brought to the attention of the Patent and Trademark Office if there was no record of it? I'm sure there's a good explanation; I just don't know what it might be.

Comments (4) + TrackBacks (0) | Category: Patents and IP


1. SRC on November 15, 2004 10:38 PM writes...

I do have one question, though, which I haven't seen answered in any of the accounts of this case that I've read: how was the AACR poster brought to the attention of the Patent and Trademark Office if there was no record of it? I'm sure there's a good explanation; I just don't know what it might be.

Duty of candor, Derek. The applicant and everyone connected with the application has a duty to disclose any and all information that the examiner might consider material to patentability, or risk being found to have engaged in inequitable conduct (invalidating the issued patent) if the matter is ever litigated.

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2. Derek Lowe on November 16, 2004 8:45 AM writes...

Yep, that must be it. They may have had an idea of just how much trouble that poster was going to be. I wonder if they only decided later that they were going to patent the technique. . .

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3. jeet on November 16, 2004 1:38 PM writes...

anyone want to explain how this works with provisional patent filings? or, how provisional patents are used in the industry?

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4. SRC on November 16, 2004 3:27 PM writes...

In a sentence, a provisional patent filing is like a reservation at a restaurant: you don't show up on time (within one year, exactly), you lose your reservation.

To extend the analogy, suppose you had to specify your entree at the time of making the reservation. If you don't show up on time, or don't actually order the entree you previously specified, you lose your reservation and get kicked out (lose your priority).

To show up for your reservation, you have to file a regular patent application within a year of filing a provisional from which you wish to claim benefit.

In the case above, if they'd first filed a provisional, they could then have publicly disclosed the information and then filed the regular application within a year of filing the provisional. No problem.

Provisionals are often used when time is short (e.g., an upcoming meeting has caught a poor planner) because they can be done quickly, if need be (no claims required; careful claims drafting can be time-consuming).

They're also used by startups to save money; they get a year in which to decide whether they want to follow through with a regular US application (filing fee ca. $1 K, but typically $10-20 K to prepare) and a PCT (overseas) filing (cost variable, because of page charges, but typically a few $K). (A provisional costs only $80 to file, and can be a draft manuscript, for those who like to live dangerously.)

A third use is essentially as a more formal invention disclosure. A document on file in the PTO forestalls any squawking about exactly when the applicants were in possession of the invention.

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