Now You See It, Now You Don't

Virtually every person who thinks they have come up with an invention understands that they can't go around telling everyone about their invention and still get a patent. Yet there are many instances where the inventors do publish the key elements of their invention prior to filing for a patent . Perhaps they don't think they have anything patentable. Perhaps their organization rewards publications. Perhaps their company thinks it will gain a marketing advantage by disclosing the newest technology now, rather than later.

For whatever the reason, three researchers at Kansas State University who developed a method of double extruding soy cotylendon fiber which, when fed to mammals, helps lower serum cholesterol and raise "good" HDL cholesterol levels decided to make a poster presentation of their results at the October 1998 meeting of the American Association of Cereal Chemists ("AACC"). The poster display remained up for about 2 and one half days.

Two years later two of the researchers filed a patent application covering the process . The Patent Office rejected the application based on the (2-year) prior publication of the invention, a rejection upheld by the Board of Patent Appeals. The applicants further appealed to the Federal Court.

The applicants agreed that the presentation disclosed all the limitations of the patent and that there was no activity that would have limited the audience from copying the information. Instead the applicants argued that the poster presentation was not a "printed publication " since no hard or soft copies were distributed nor was there evidence that any attendees had photographed the posters. Further, they said, it had not been cataloged or indexed in any library or database.

The court was not impressed . It said, " Indeed, the key inquiry is whether or not a reference has been made 'publicly accessible'...to the public interested in the art." To buttress its decision, the court used the applicants' own cited precedents: in one case an undergraduate thesis, presented to a small faculty defense committee and only indexed in the library by student name and thesis title, was deemed not a printed publication, whereas in another case the theses themselves where indexed and filed at the library and thus deemed publicly accessible printed publications.

In the case at hand , the court pointed out that; the poster presentation comprised only 14 slides, of which maybe 8 contained substantive information and " only a few would need to have been copied ...to capture the novel information...", the slides were available continuously for perhaps 60 hours , the observers were, by definition, of at least ordinary skill in the art and they would have been motivated to read the slides, there was no attempt to stop copying (and, the court noted, the volume of information so small it could easily be memorized), and it is certainly the expected norm at a conference that the audience will copy, make notes, or otherwise absorb the teachings of the presentations.

Given this evidence, the applicants would have had to be magicians to make the information they displayed disappear from the memories, notes, or photographs of the conference attendees.