The following article appears in the journal JOM, 50 (6) (1998), p. 73. JOM is a publication of The Minerals, Metals & Materials Society

Presenting Your Technical Paper May Have an Impact on Intellectual Property Rights

There are numerous obvious reasons why an individual or individuals would consider presenting a paper at a meeting of a professional organization. Sharing the information with others can result in enhanced commercial interest in the technology. It also reflects favorably on the creators, as well as their employers or research sponsors, as being technically innovative. It is important, however, that preliminary consideration be given to the relationship between the new technology and the protection of the same through intellectual property. If the technology is potentially patentable, consideration must be given to the impact the presentation and publication of the paper and any associated abstracts will have on both U.S. patent potential and foreign patent protection.

In the United States, if one publishes an invention, a U.S. patent application must by filed within one year after the date of publication or the filing will be barred by statute. In most other major countries, there is no such grace period. More specifically, under the law of most major countries outside of the United States, if an invention is known to or used by the public before the effective filing date of a patent application, the filing will be barred.

One general approach to eliminating the risk of loss of foreign rights by the presentation of a paper results from certain treaty relationships between the United States and, essentially, all major countries. The treaty, in effect, states that if one files a U.S. patent application and within one year thereafter files a corresponding treaty application within a foreign country, that country will treat the effective filing date as being the date on which the U.S. application was filed. For example, if a patent application was filed in the United States on November 1, 1996, and a corresponding German application claiming priority of the U.S. application was filed on March 1, 1997, the effective filing date in Germany would relate back to November 1, 1996. A publication made on November 2, 1996, would, therefore, be deemed to have been made after the effective filing date in Germany and would not bar one from obtaining valid protection in Germany. The original U.S. filing could be either a regular U.S. utility application or a more abbreviated provisional application. As an alternative approach, the initial filing in the United States may be made in accordance with the Patent Cooperation Treaty to reserve rights in the more than 90 country members of the treaty organization.

Another way of avoiding inadvertent forfeiture through presentation of a paper and disseminating full-text versions of the paper or an abstract would be to exclude details of the invention. The content of the paper and the extent to which it discloses the invention are important considerations in determining whether rights have either been forfeited as a result of full disclosure of the invention or have been forfeited in part as a result of a narrowing of the scope of coverage that would be available. Such an approach to avoidance of forfeiture, for example, might involve disclosing the beneficial data resulting from the use of the invention without disclosing the invention. If, for example, the presentation and the associated publication merely stated that by adding an unidentified alloying constituent to a known alloy, formability would be enhanced, and comparative data were presented, this would not serve to disclose the invention and, therefore, would not present an obstacle to patentability. If, on the other hand, the presentation and associated publication specified the alloying constituent and the amount employed, this could involve a disclosure that would potentially create patentability problems.

It is important for some purposes to bear in mind the distinction between a publication, which is relevant to the issue of patentability in the United States, and the foreign standard of being known to the public or used by the public. The oral presentation per se would not normally be considered a publication by U.S. standards, but would make the information known to the public and would be highly relevant to the issue of patentability in other countries. In this context, one must also be careful in any post-presentation question-and-answer period. Inherent in this observation is that it is generally not practical to have those present sign confidentiality agreements or otherwise agree to maintain the information in confidence, thereby avoiding a public disclosure.

If patent protection is being pursued, it would be desirable to mention this so as to minimize the chance that anyone present would be reasonable in concluding that the presenter or his or her sponsors or employers intended to make a gift of the technology to the public. If patents have been issued on the technology, the presentation and related publications would not result in forfeiture.

Another consideration is the extent to which disclosure of the new technology might result in a third party making improvements or modifications that they might seek to patent. Also, trade secrets exist only in information maintained in confidence. Public disclosure would, therefore, destroy the trade secret status of the information.

As copyrights are established in the United States once one reduces the work to a tangible mode of expression, presentation at a meeting and associated publications would have no negative impact on copyright ownership or the right to obtain protection. Publication would convert the work from an unpublished work into a published work, but copyright protection is available for both. The United States has adhered to treaty arrangements that facilitate obtaining corresponding copyright protection in most major countries.

By bearing in mind the foregoing concerns, the likelihood of inadvertent forfeiture of certain intellectual property rights can be minimized. By establishing the proper sequence of events and controlling the content of the paper, the benefits obtained from making such a presentation can be maximized, while minimizing the risk of loss of intellectu-al property rights.

For more information, contact A.B. Silverman, Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 42nd Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.