BEST PRACTICES for Graduate Students Your Thesis, Your Dissertation, Public Disclosure and Patents May 2010 Richard C. Litman, Registered Patent Attorney

What qualifies for a patent? Theories, laws of nature, abstract ideas, and discoveries in nature do not qualify. Machines, articles of manufacture, compositions or processes qualify. Has to be new and not obvious to those skilled in the field of invention. Improvements can qualify.

Why are patents important? Patents recognize and rewards inventors. The patent system is intended to provide useful information to encourage the development of new and improved technologies. Great scientists use patent information to develop useful technological advances. The patent system creates opportunities, jobs and prosperity.

Why is disclosure an issue? The patent system rewards disclosure. The disclosure must be in a patent filing to preserve patent rights. In return for disclosure in a patent application, property rights are obtainable. In most countries, all patent rights are lost by public disclosure.

Patent information can help you Prior patent disclosures should be used in developing research projects. Patent documents contain information that may not be in journal publications. Knowing what has been done before can help develop what has not yet been done.

Patent documents are unique Recent developments are found in patent documents. New developments are initially, and sometimes exclusively, recorded in patent documents for a number of fields of technology. Patent documents contain information that may not be in scientific journals.

Know about the patent system Patent applications should be filed before publicly disclosing a patentable idea. Determine if your graduate research involves a a patentable idea before you publicly disclose it. Preserve possible patent rights before public disclosure of your thesis and dissertation. Take steps to ensure your hard work is recognized in the patent system.

First to File In Most Countries The right to a patent for an invention is granted to the first person to file a patent application for that invention, regardless of the date of actual invention.

First to Invent in U.S. System In the U.S. “Invention” is defined as a two step process: 1) Conception of the invention and 2) Reduction to practice of the invention. An inventor claiming to be the first to invent can challenge the “inventorship” of another inventor who was the first to file and who has a granted or pending patent.

Public Disclosure Bars Patentability 10 In Most Countries An invention can not be patented if it has been publicly disclosed in: > Printed Publications > Public Use, or > Offers for Sale at any time prior to the filing of a patent application.

One Year Rule for US Applications 11 In the US An invention can not be patented if the invention has been publicly disclosed in: > Printed Publications > Public Use, or > Offers for Sale for more than one year prior to the filing of a patent application.

Grace periods vary by country The one year grace period should not be used as a general strategy for publicly disclosing an invention before filing a patent application.   The lack of a uniform grace period requirement around the world could mean patent applications that rely on grace period disclosures may be invalid in other countries.

Best advice is keep it quiet Don't go public with your research too early. Valuable rights can be lost forever.   The opportunity to patent new or improved technologies can be lost forever if you publicly discuss or publish your research before a patent application is filed.

Publication establishes disclosure Electronic and printed publications establish public disclosure when they: > Contain sufficient information for someone skilled in the art to percieve what is taught and put it into effect. > Are publicly available and accessible to those skilled in the field of the invention.

Public Disclosure - Not Always Clear 15 Public disclosure can result when paper and electronic copies of: Journal Articles, Abstracts of Articles, and Books become publicly available and accessible.

Protect Patentability – Articles, Books To be safe, delay publication of an abstract, article or book until after a patent application is filed. If necessary, do not disclose the entire invention in an abstract. Warning: Abstracts and articles may be published on-line days or weeks before print publications are distributed.

Public Disclosure - Not Always Obvious Public disclosure can result when paper and electronic copies of: Abstracts of Lectures and Poster and Slide Presentations, Copies of Posters, Copies of Slides, and Copies of Lecture Notes become publicly available and accessible.

Protect Patentability – Presentations To be safe, file a patent application before presentation documents are distributed. Caution: Abstracts of lectures and poster presentations may be published on-line or mailed months before a meeting. Printed copies of slides given to lecture audiences can serve to bar patentability.

Disclosure of Thesis and Dissertation > Printed copies of an oral Thesis defense are deemed public disclosure if given to non-university audience members. > When university libraries catalog a Thesis or Dissertation, the on-line abstract can be deemed public disclosure. > Public disclosure occurs when a Thesis or Disseration becomes accessible on the library shelves.

Protect Patentability – Thesis To be safe, file a patent application before the library shelves your thesis or posts an abstract on-line. Remedy: Have the library temporarily place a “hold” on shelving the thesis. Place a “hold” on on-line publication of the Thesis abstract.

Printed Publications - Research Disclosure can result from paper and electronic versions of grant and corporately funded research documents, including: Research Proposals Research Reports Research Summaries

Protect Patentability – e-Mail Encrypt or password protect e-mail: > E-mails sent on unprotected networks may be seen, shared and distributed by persons other than the sender and the intended recipient. > Drafts of abstracts and articles sent by e-mail should be encrypted or password protected.

Protect Patentability – Public Testing If public testing is required: Keep testing to a minimum Involve the fewest possible subjects Make research notes and keep confidential Get secrecy agreements before tests Do not publicly show until after the patent application is filed

File often and file early Inventing is a dynamic process. File applications as improvements are made. Can be a series of applications on evolving invention or a family of applications. A strategy should be developed as early in the research process as possible to maximize rights. Best approach is to file the first application when a research project is started to ensure that the expected outcomes qualify for a patent.

Courtesy Service for KFUPM 25 Review research proposals, graduate theses and dissertations for possible patentable ideas. Review articles prior to, and within 1 year after publication, for possible patentable ideas. Review senior projects and disclosures. Identify possible collaborative relationships. Do pre-searching before patentability search. Suggest approaches to innovation process. Recommend next steps to help you succeed.

Mr.Al Muratori is in charge of the patent search practice at our law firm. He was a patent examiner for many years, and has been at our firm for about 10 years. His email is amuratori@litmanlaw.com We can let you know whether we think an idea may qualify for a patent, whether more information is needed to evaluate patentability, and how to proceed further.

Get more information If you have questions, or want to learn more about using patent information and the patent system to accomplish your goals, please contact the Innovation Centre at KFUPM. Mr.Al Muratori Email: amuratori@litmanlaw.com Patent Attorney Richard Litman Email: Litman@4Patent.com Telephone: 001-7034861000