1 April 2011PatentsRon Kaminecki

Conference papers as prior art

Bloviating about one’s work in a professional forum is one of life’s pleasures and a special reward for those seeking to inform others and also to learn from the inevitable questions presented by fellow technical attendees. Unfortunately, if the speaker says too much, it can work against any future patent filings for that invention. The key is whether the individual has disclosed sufficient information to allow another to replicate the invention without undue experimentation.

A picture of a time-travel machine may not be enough for a viewer to replicate the device, but an in-depth discussion of how a black hole was corralled and used as a power source may preclude the inventor from obtaining a patent for the device. Of course, if you did disclose too much information about your time-travel device, you could always set the controls to a time just before the meeting and warn yourself not to say anything!

Because no one has yet been able to redo a talk in the past, most companies require their speakers to have the legal department approve any presentations. However, looking for prior art in conference papers is a great way of finding background on an invention prior to filing, or the names of the inventors, or perhaps ancillary information about future markets, funding or even obstacles.

In this case, we look at an inventor named Timothy Claypole, who has a patent for a rotary combustor with a priority year of 1983. When we research publications under his name, we find that he has also given several conference papers prior to this date. In the US, prior art centres around such documents only if they occur one year prior to the priority date, and by this we mean the exact date of December 23, 1983, so a search would have to include a publication prior to December 23, 1982.

In most search systems, it is possible to limit the results by exact date to weed out any of the extraneous materials, and a quick search by name and date finds a publication by this individual on the same topic as the patent dated December 1, 1982, just over the one-year period required by US law. At this point, a good attorney would challenge the date of publication, since ‘date of publication’ is typically seen as being available to the public and possibly even in an index.

Note, however, that outside the US, the critical date for prior art starts the day before the priority date, so do not discard those other references as they may come in handy for non-US litigation. If you find a conference paper that is on target but the date is not before the critical date, do an author search on all of the authors to see if any of them presented the same paper more than once. Typically, they will change the title slightly as sometimes one paper updates an earlier one.

Of course, run a citation search on the authors to see if there are any other papers that may refute or even add to the technology. Indeed, consider the entire conference at which a target paper was presented as there may be other papers that are spot on, but their titles and abstracts may be elusive in a normal text search.

If there are any other names listed as presenters on a conference paper, consider running searches on their names to see if they filed any patents, gave any other talks, published a paper, gave an interview to a news outlet or were cited elsewhere. Run these names in a business database to see if any have formed companies or are listed as directors or board members of any entities.

Then, use the names of the companies involved to determine any patents assigned to these companies. Quite often, patents are kept in the name of the inventors and even though these individuals form companies, they will often assign the rights to the new entity, so an assignee search by company is prudent to determine who owns what. Finally, consider any of these individual names for expert witness purposes.

This is why companies want their attorneys to approve any conference presentations.

Ron Kaminecki is director of the intellectual property segment at Dialog LLC. He can be contacted at: ron.kaminecki@dialog.com

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