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Tip Sheet Volume 2:9
The Impact of Public Disclosure
on Patentability
Public disclosures of research results
take many forms including written, oral and electronic. Disclosures
can be published papers, abstracts, posters, seminars, email,
and even grant applications. One of the best ways you can avoid
the possibility of destroying patentability due to a public disclosure
is to plan ahead--either the intellectual property can be protected
first, or the disclosure can be made under 'confidentiality'.
United States and Foreign Patent
Rights
In the United States, a patent application may be filed up to
one year following the first public (non-confidential) disclosure
of the invention. In foreign countries, however, the patent must
be filed prior to any public disclosure. Depending on the industry
potentially interested in commercializing the results of the
research, the ability to file patents in foreign countries may
be important.
Non-confidential Disclosures
Public, or non-confidential disclosures, include journal articles,
submitted abstracts submitted , poster presentations, presentations
to company representatives, research proposals (see below), seminars,
and website postings--essentially all activities that provide
persons outside your research group access to the research results.
These disclosures are generally not considered confidential and
may affect the ability to file a patent application. Personal
conversations with colleagues outside your research group may
also be public disclosures.
Confidential Disclosures
Confidential disclosures include any discussions concerning research
results that take place after a confidentiality agreement has
been signed and authorized by all parties to the discussion.
In some cases, a seminar or poster may be presented to a specific
group of people, all of whom have agreed to the terms of the
confidentiality agreement. This type of disclosure does not impact
the ability to file a patent application.
Research Proposals and Agreements
Research proposals and agreements are a form of disclosure that
deserve special attention. If the submission is to a company,
consortium, or other industry group, it should be done under
the terms of a confidentiality agreement and clearly marked "CONFIDENTIAL."
If the proposal is to a federal or state funding agency, the
guidelines for the specific funding program should be consulted
to determine if that agency keeps proposals confidential and
at what point the proposal is no longer confidential, e.g., upon
award of a grant. If confidentiality is a concern, please check
the website for the specific program, or contact Lynne Mumm,
ISURF Disclosure Manager, 294-4742, lmumm@iastate.edu.
Invention disclosures, provisional
patents and filed patents
For research results that contain potentially patentable information,
an invention disclosure should be filed with ISURF prior to any
non-confidential disclosure. If there is patentable information
in the disclosure, a provisional patent may be filed to protect
the intellectual property and preserve the ability to file foreign
patent applications, while allowing publication of the research
results. The provisional filing provides a one-year period in
which the technology can be evaluated and marketed before decisions
are made on filing a patent application.
Remember, all confidential documents
should be clearly marked "CONFIDENTIAL."
If you have any questions
about this tip sheet or working with industry, please contact:
Lisa Lorenzen
Biotechnology Industrial Liaison Phone: (515) 294-0926
1210 Molecular Biology Building Email: llorenze@iastate.edu
Acknowledgement: A special
thanks to Lynne Mumm for her assistance in preparing this tip
sheet.
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