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Does your company or institution display its technology at trade shows, conferences or learned symposia? If so, a recent decision by the highest patent court in the country, the U.S. Court of Appeals for the Federal Circuit, directly impacts your ability to disclose technology while preserving patent rights. In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004). U.S. STATUTE BARS PATENTABILITY In the United States, an inventor is entitled to a patent unless, among other things, the invention is described in a printed publication in this country or a foreign country more than one year prior to the date that an application for patent is filed. 35 U.S.C. �102(b). The statutory phrase “printed publication” has been interpreted to mean that, before the critical date, the reference must have been sufficiently available to the public interested in the technology to find that the reference was “published.” In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988)), In re Hall, 781 F.2d 897 (Fed. Cir. 1986). The patent community had believed that to qualify as a “printed publication,” the reference must have been distributed to members of the relevant public, and/or have been indexed to provide public access. However, on Aug. 18, 2004, the Federal Circuit reduced the requirements for finding a reference “publicly accessible” for purposes of qualifying as a printed publication. In the recent case of In re Klopfenstein, a three-judge panel announced for the first time that neither dissemination nor indexing (cataloging) is required to establish the availability of a printed publication as a statutory bar under 35 U.S.C. �102(b). Specifically, the Federal Circuit found “publication” sufficient based on applicants’ slide presentation printed and pasted onto poster boards and continuously displayed (i) for two-and-one-half days at a meeting of the American Association of Cereal Chemists (AACC), and, one month later, (ii) for less than a day at an Agriculture Experiment Station (AES) at Kansas State University. The slide presentation was made two years before the application filing date, and disclosed every element of the invention claimed in the subject application. There was no disclaimer or notice to the intended audience that prohibited either note taking or copying of the presentation. The Federal Circuit found that the Patent and Trademark Office was correct in finding that the poster board display was sufficiently publicly accessible to qualify as a “printed publication” under the statute even though (i) no copies were disseminated at either the AACC meeting or at the AES, and (ii) the presentation was never cataloged or indexed in a library or database. The Federal Circuit, therefore, held the presentation to be a “printed publication.” PREVIOUS CASES In the Klopfenstein decision, the Federal Circuit explained that the publication bar is based on the principle that once the invention is in the public domain, it is no longer patentable. According to the court, there are many ways in which a reference can be made known to the public. “Public accessibility” was said to be the touchstone in determining whether a reference can constitute a “printed publication” bar under 35 U.S.C. �102(b). The court referred to several previous cases in support of its decision. For example, the court referred to the case of In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989). In Cronyn, college students presented undergraduate theses to a committee of four faculty members. These theses were later catalogued in an index in the main college library. The index included thousands of individual cards that contained only a student’s name and the title of his or her thesis. The actual theses were not included in the index or made publicly accessible. The Federal Circuit held in Cronyn that, since the theses were only presented to a handful of faculty members, and had not been catalogued or indexed in a meaningful way, they were not sufficiently publicly accessible for the purposes of 35 U.S.C. �102(b). In re Cronyn, 890 F.2d at 1161. In In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986), the Federal Circuit found that a thesis filed and indexed in a university library qualified as a “printed publication” under 35 U.S.C. �102(b). In Hall, the indexed theses were on file and made freely available to the general public by the university more than one year before the filing date of the relevant patent application. According to the Klopfenstein decision, the court in Hall did not rest its holding merely on the indexing of the thesis, but used it as a factor in determining “public accessibility.” In re Hall, 781 F.2d at 898-99. Similarly, in Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985), a paper delivered orally to the First International Silk Culture Congress was considered a “printed publication.” At least 500 persons having skill in the art heard the presentation. A key to the court’s finding was that actual copies of the presentation were distributed. The court in Klopfenstein, however, held that the MIT court did not limit its determination of public accessibility to instances in which copies of the references were actually offered for distribution. MIT, 774 F2d at 1108-10. Finally, the Federal Circuit referred to In re Wyer, 655 F.2d 221 (CCPA 1981). In Wyer, the court determined that an Australian patent application kept on microfilm at the Australian Patent Office was sufficiently accessible to the public to qualify as a “printed publication.” In re Wyer, 655 F.2d at 226. The Federal Circuit in Klopfenstein noted that the court in Wyer came to this conclusion whether or not there was actual viewing by the public or dissemination of the application. It was sufficient that the records of the application were kept so that the public could access them at any time. In sum, the Federal Circuit in Klopfenstein considers public accessibility to be the criterion by which a prior art reference is judged for the purpose of a bar under 35 U.S.C. �102(b). The court will apparently rely on facts such as distribution and indexing, but not to the exclusion of all other measures of public accessibility. Thus, distribution and indexing were not the only factors considered by the court in Klopfenstein to be relevant in a “printed publication” enquiry. PUBLIC ACCESSIBILITY FACTORS According to the Federal Circuit in Klopfenstein, the determination of whether a reference is a “printed publication” involves a case-by-case enquiry of the facts and circumstances regarding the reference’s disclosure to the public. The Klopfenstein court found that the applicants’ slide presentation was a printed publication and, thus, a statutory bar because of the following factors: � The reference was displayed to the public approximately two years before the application was filed; � The reference was shown to a wide variety of viewers, a large portion of whom possessed skill in the art of cereal chemistry and agriculture (the subject matter of the application); � The reference was prominently displayed for approximately three cumulative days at the AACC and the AES; and � The reference was shown with no stated expectation that the information would not be copied or reproduced by those viewing it. As mentioned above, it was not controlling that the reference was not distributed or that the display was not later indexed in a database, catalog or library. Thus, in its analysis, the Court relied on (i) the length of time the display was exhibited, (ii) the expertise of the audience, (iii) the lack of notice or reasonable expectation that the material displayed would not be copied and (iv) the simplicity with which the material could have been copied, as contributing to finding the subject reference a “printed publication” under 35 U.S.C. �102(b). PREVENTING INADVERTENT PUBLICATION Don’t distribute. If the cases are consistent on any factor, it’s the requirement to refrain from distributing copies of the reference. This would include availability on the Internet. In addition, your company or institution should have firm control of any copies of the printed material which constitutes the reference. In that way, an attack on the patent based on an argument of unauthorized dissemination of the presentation may be rebutted. Don’t index or catalogue. Simply stated, don’t place the printed reference in a location (e.g., repository, library, database, etc.) where access can be had by research or investigation. Even if buried in an archival environment, availability to the public by index or catalogue may be sufficient for a finding of “public accessibility.” Disclose only a short time. The duration of the display plays a part in determining the importance of the public capturing, processing and retaining the information conveyed by a reference. The more transient the display, the less likely it is to be considered a “printed publication.” For example, in Regents of the Univ. of Cal. v. Howmedica, Inc., 530 F.Supp. at 846, 860 (D.N.J. 1981), it was held that a presentation of lecture slides of limited duration was insufficient to constitute a publication under 35 U.S.C. �102(b). The expertise of the intended audience is also a factor. Even though a display may be so short in duration as to be “ephemeral,” it may be sufficient if the audience is able to observe and identify that which is new and useful. Jockmus v. Leviton, 28 F.2d 812, 813-14 (2d Cir. 1928). Don’t permit copying. The possibility of copying is also important to a determination of public accessibility. Thus, where a publication is not able to be copied or if steps are taken to prevent the public from copying temporarily posted information, it may be held that the publication is not public for the purposes of a statutory bar. Protective measures could also be put into place, e.g., license agreement, nondisclosure agreements, anti-copying software or even a simple disclaimer informing members of the viewing public that no copying of information is allowed. CONCLUSION Thus, it may be possible to prevent a patent-invalidating presentation or disclosure. At a minimum, permit no dissemination of the disclosed material, and do not make the material available through an index or catalogue. And if making a presentation, the display of written materials should be relatively short, with a requirement that the viewers not be entitled to make notes or copy any information contained therein. Based on the Federal Circuit’s most recent analysis, one could expect at least to minimize the risk of a statutory bar under 35 U.S.C. �102(b). Baron is a partner with Hoffmann & Baron (www.hoffmanbaron.com) of Syosset, N.Y. If you are interested in submitting an article to law.com, please click here for our submission guidelines.

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