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Technology Transfer Office Disclosure Guide: Helping Researchers Understand What Constitutes a Public Disclosure

By Naomi Biswas, March 19, 2020

Technology Transfer Office

An important role of a technology transfer office (TTO) is to educate inventors as to what constitutes a public disclosure for patent purposes. Under U.S. patent law, there is, for most practical purposes, a one year grace period to file a patent application after an inventor’s own disclosure. In most other jurisdictions, such as Europe, there is no such grace period and a disclosure by the inventor can become a bar to patentability. Researchers make many different types of disclosures, without always understanding the full scope of what constitutes a public disclosure. Discussed below are common disclosures made by university researchers.

1. Peer-Reviewed Manuscripts and Online Publications

Most inventors understand that publication of their manuscript in a printed journal constitutes a public disclosure which can affect patentability. But many inventors do not realize that the online posting of their manuscript by the journal also constitutes a public disclosure. It is important for the inventor to ask the journal when the manuscript will be posted online, as that date is often at least a week in advance of the printed publication date. If the inventor has not been informed of the online publication date, a safe practice would be to assume online posting will be imminent once the inventor has submitted to the journal final proofs of the manuscript, including figures.

2. Non Peer-Reviewed Online Publications – bioRxiv

In addition to publication of manuscripts in a peer-reviewed journal, researchers also have the option of posting their manuscript online through non peer-reviewed websites. One example of such a site is bioRxiv, an online archive and distribution service for preprints in the life sciences. As long as the article passes a basic screening process (for offensive, dangerous, or non-scientific content), the article will be posted online without peer review. The online posting can occur as quickly as 48 hours after submission. Many university life science researchers use bioRxiv without understanding that it constitutes a public disclosure for patent purposes. Technology transfer offices should specifically ask researchers if they plan to post their articles to any non peer-reviewed sites in advance of publication in a peer-reviewed journal.

3. Theses and Dissertations

A thesis or dissertation usually comprises both an oral defense and a written manuscript. Although each case is fact specific, if the oral thesis defense is made public, then the thesis could be considered a public disclosure as of the date of the defense. If the oral thesis defense is not made public and the thesis is shelved in a library, then the thesis would become a public disclosure when it is cataloged, such that a member of the public could locate it. In many universities, a thesis can be embargoed for a limited time. The university can use this embargo period for submitting a patent application.

4. Scientific Meeting Presentations

Presentations at scientific meetings can include an abstract, a poster, and slides. Inventors often realize that their slides and posters are considered public disclosures as of the date they are presented and therefore inform their technology transfer office of the date they will be presenting at a meeting. However, many inventors do not realize that their abstract, and sometimes an entire manuscript, may be published in advance of the meeting date. Meeting abstracts are usually made available to meeting attendees one or two months prior to the meeting. Proceedings of a conference sometimes include an entire manuscript, and may be made available to registrants before any scheduled talk or presentation. Additionally, videos of talks may be posted online. Meeting attendees sometimes have the option to elect when their abstracts will be published. For patent purposes, inventors should pay attention to the date they elected for their abstract to be published.

5. Grant Applications

Although grant applications are kept confidential while under review, grant abstracts become publicly available once the grant is funded. To prevent public disclosure of an invention, grant proposal abstracts should be high-level and not describe the invention.

6. Job Talks

Information discussed during an employment interview may be considered a public disclosure since it is a presentation of ideas to a party outside of the university. Researchers should let their technology transfer office know the dates of such talks, so that a decision can be made whether a patent application should be filed in advance of disclosure. If possible, researchers should not include in such job talks confidential subject matter which has not yet been included in a patent application.

7. Social Media

Information posted to social media can also be considered a public disclosure. Social media in this context covers any media that is widely accessible, including but not limited to, Facebook, Twitter, LinkedIn, technical and professional discussion groups, forums, blogs, and the researchers own lab websites. Information posted on such media outlets can be considered a public disclosure which could affect patentability.

8. Discussions with Industry or Potential Investors

Many researchers will have discussions with industry or potential investors in order to advance their research. If a confidential disclosure agreement is executed with the non-university party, then the disclosure generally is no longer considered a public disclosure for patent purposes. As long as the TTO is made aware of meetings with third parties, they can take the proper steps to prevent the disclosure from being considered a public disclosure.

9. Activities that do not constitute public disclosure

Although many disclosures in the university setting may constitute a public disclosure for patent purposes, there are many activities that generally do not constitute a public disclosure, including lab and faculty meetings attended only by university employees, confidential submissions for publications prior to acceptance and publication, disclosures made to third parties under confidential disclosure agreements, and unfunded government grant applications.

Since there are many different types of disclosures which can affect patentability, the best practice is for the technology transfer office and the researchers to have open lines of communication. TTOs try to balance the university’s academic interest in scientific disclosure with the commercial interest in obtaining patent protection. With open communication, the university can timely file patent applications in advance of researchers’ disclosures to promote the dual goals of patent protection and scientific disclosure. Patent GC can help your TTO create and implement pubic disclosure guidelines, as well as assist with other key functions such as patent portfolio reviews, budget analysis and strategic decision-making. Please contact Naomi Biswas directly at nbiswas@patentgc.com or request more information by visiting our Contact Us page.