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Anyone familiar with the basics of patent law knows that no one can patent an invention that has entered the public domain. This presents the difficult question of when an invention makes the leap from patentable idea to public property. Even for those familiar with patent law, the answer often is complex and mined with unexpected traps and pitfalls. Educating inventors regarding this question and its answers may prevent an unexpected loss of rights. Asking the right questions when considering whether to seek patent protection may save thousands of dollars in fees that would otherwise be wasted on an unpatentable invention. To be patentable in the United States, an invention must not have been patented or described in the United States or a foreign country more than one year prior to the filing of a patent application. Further, the invention must not have been in public use or on sale in this country prior to that one-year period. In short, any printed information made available in unrestricted fashion can be considered a publication. Scientific papers are obvious examples of publications that could invalidate an applicant’s patent rights. But there are many other kinds of publications that can be just as deadly. One that has historically been overlooked by inventors is graduate dissertations and theses. Often only a single copy of a graduate student’s thesis is filed in the dusty section of a library somewhere, never to be seen again. It is easy to overlook that this was an invalidating publication for patent purposes if the thesis describes the patentee’s invention. Scientists also tend to overlook other more transient publications. For example, a visit to a scientific meeting may involve the presentation of posters and the publication of short abstracts describing them. For patentability purposes, the posters and the abstracts are publications. It also is increasingly common for laboratories to have homepages on the Web describing their research in some detail. This too is a publication. Finally, news articles and press releases also can be patent-invalidating publications. Even more tricky than problems generated through publication is the question of public use. While public use generally is not a problem for private industry, it can be a big problem among academics. The natural tendency of academics is to share information and materials freely with friends and colleagues. When that sharing takes place under a confidentiality agreement, material transfer agreement or both, there should be no problem. But scientists often forego the inconvenience of such agreements when sharing information or materials with trusted colleagues. Since scientific ethics strictly prohibit the publication or distribution of shared information or materials without the original sender’s permission, most if not all scientists may believe that the secrecy of their inventions is sufficiently protected. While this may be correct as a matter of law, it is a costly and messy question to litigate after the fact. The best practice, therefore, is to avoid any sharing of information without the proper agreements, at the very least until a patent application is filed. For academics, one of the more worrisome examples of public use is illustrated by Baxter Int’l Inc. v. Cobe Laboratories Inc., a 1996 case in which inventors at a government facility used their patented centrifuge in their laboratory for more than a year prior to filing a patent application. The U.S. Court of Appeals for the Federal Circuit found that colleagues from other laboratories had open access to the laboratory and the device. While it was never shown that those colleagues used the device or disclosed its existence to others, the mere fact that they had open access, and were under no duty to keep any information they obtained confidential, was enough to place the invention in “public use.” Open laboratories, departmental or joint lab meetings, even conversations with colleagues, could be considered “public uses” if not protected by obligations of confidentiality by all participants. ON SALE Finally, U.S. law renders unpatentable any invention that has been “on sale” in the United States more than one year before the filing of a patent application. The key concern here is that an invention can be “on sale” where it has only been offered for sale, not actually sold. This is true even if there was no disclosure of the technology used to make the item offered for sale. Generally, academic institutions license technologies rather than selling products that embody the invention. Such offers to license generally are not offers for sale, but exceptions exist. One major exception may be when scientific materials that embody the invention are offered to a potential buyer along with a license of patent rights to the technology. Such proposed transfers arguably are offers for sale, not merely offers to license. Another exception involves leasing the technology to a company rather than licensing it. A lease can be an offer for sale where a license would not be. U.S. law is troublesome enough. But it must be remembered that in many respects the United States has much less stringent rules regarding the patentability of inventions than do most foreign countries. In many countries there is no grace period for public disclosures or publications of an invention. The types of disclosures discussed above may instantly obviate an inventor’s right to patent. Furthermore, an invalidating publication in the United States must constitute an “enabling disclosure,” i.e., the publication must describe the invention in sufficient detail for others to understand and replicate the invention. Not so in many foreign countries. In some instances, it may be possible for a patentee to lose foreign rights merely by disclosing the existence of the invention, without any details as to its characteristics. There are many pitfalls for the unwary inventor. Educating and communicating with inventors can make all the difference. M. Michelle Muller is an associate with and David P. Blanke is a partner in Vinson & Elkins’ (www.vinsonelkins.com) Austin office. Both work on issues related to patentability of inventions and the protection of patent rights. The views expressed herein are those of the authors and are not intended to reflect the views of V&E, its lawyers or clients. 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