Overcoming Challenge of Inventor's Publication as Prior Art

Public disclosure before filing a patent application generally disqualifies an invention for securing a patent. In the United States, an invention loses its eligibility for patent protection under 35 U.S.C. 102(a)(1) if it was:

The phrase “otherwise available to the public” broadly covers any form of public disclosure before the invention’s effective filing date. This includes various scenarios where the invention was made publicly accessible. Examples include public demonstrations, oral presentations, online disclosures, published academic work, or even informal public use.

One-Year Grace Period

Maintaining the confidentiality of an invention until filing a patent application is crucial, as any form of public disclosure can jeopardize its patentability. However, the U.S. patent system offers a one-year grace period, allowing inventors to file for a patent within one year following the public disclosure.

According to 35 U.S.C. 102(b)(1)(A), a disclosure made one year or less before the effective filing date of a claimed invention shall not be considered prior art if:

In academic circles, it’s common for researchers to publish their work in scientific journals or present it at conferences prior to filing patent applications. It’s important for academics to be aware of and adhere to this one-year grace period.

Many publishers now offer early online publication, which precedes the official publication date. Such early online publications are deemed public disclosures. Therefore, to safeguard patent eligibility, inventors are encouraged to file their patent applications promptly within this grace period.

Overcoming Rejection with Affidavits or Declarations

To address rejections due to an inventor’s own publication within the grace period, the U.S. Patent Office allows the submission of an affidavit or declaration under 37 CFR 1.130(a). This declaration should affirm that the inventor was responsible for the disclosure or that it was derived from them.

A typical statement might include:

1. Inventors 1 and 2 conceived the idea, conducted the experiments, and authored the article titled […], published on [DATE] in [Journal Name].
2. The paper disclosed subject matter related to the above-referenced application less than one year prior to the application’s effective filing date.

Distinguishing Between Inventorship and Authorship

In scenarios involving co-authorship, where some co-authors are not listed as inventors, the declaration should include a definitive statement from the inventor affirming their role in the publication, along with a reasonable explanation for the exclusion of additional authors as inventors. This is supported by M.P.E.P. 2155.01 and the precedent set in In re Katz (687 F.2d 450, 453 (C.C.P.A. 1982)), commonly known as a “Katz Declaration.”

For instance, a statement might specifically include:

1. Two co-authors, Student 1 and Student 2, supervised by the inventor, contributed to the experiments.
2. Other co-authors, Professor 1 and Researcher 2, assisted with data analysis and reviewed the manuscript of the article after the conception of the claimed invention was completed.

It’s important to note that inventorship and authorship are fundamentally different. In research, authorship is often mistakenly considered equivalent to inventorship. However, identifying inventors for a patent differs from identifying authors for a publication. Being an author on a journal article does not automatically confer inventorship on a patent.

Under U.S. patent law, each inventor must make a novel, non-obvious, and significant contribution. Individuals who only perform experiments, collect data, or review articles without intellectually contributing to the core idea are generally not recognized as inventors. Inventorship typically includes those who conceive the invention, rather than those who assist in its development or documentation.

Keeping Correct Attribution

Clearly distinguishing between inventorship and authorship is paramount when handling patent applications. This crucial step not only safeguards the inventor’s legal rights but also fosters fairness and transparency in both academic research and intellectual property law.

Incorrectly identifying or excluding inventors can have dire consequences, ranging from patent invalidation to protracted legal battles. Similarly, misidentifying or omitting authors in academic publications can lead to academic misconduct allegations and ethical concerns. Therefore, accurately recognizing and acknowledging contributors is fundamental, both within the legal framework of patents and the rigorous standards of academic research.