Publish And Perish: The Tension Between Publishing And Patenting

On September 21, 2012, the Federal Circuit held that claims directed to the sequence-specific recombination of DNA in a eukaryotic cell using bacteriophage lambda sequences and variant integrase genes was obvious. [1] This case may not be terribly surprising in light of the KSR [2] and In re. Kubin [3] cases, however, it serves as a cautionary reminder to those who manage the publication policies of inventors. In Dröge , one of the inventor’s own prior publications was used to find that the claimed invention was obvious. Thus, it is critical to manage inventor publication activities to minimize the risk of creating prior art against your own patents.

On May 21, 1999, Nicole Christ and Peter Dröge of the Institute of Genetics, University of Cologne, Germany, published an article on the site-specific recombination of DNA using variant lambda integrases (“
Christ”). [4] The article teaches that the directionality of recombination is altered in vivo by two mutant integrases, Int-h and Int-h/218. On August 29, 2000, an international patent application in the name of Dröge, Nicole and Lorbach was filed. [5] The application discloses and claims Int-h and Int-h/218. During prosecution of the U.S. Counterpart [6], the claims were rejected, among other reasons, as obvious over Crouzet [7] and Christ. The applicants lost their appeals to the Board of Patent Appeals and Interferences and to the Federal Circuit. Thus, an inventor’s own prior publication sank the patent application.

A critical component of research and development is communicating findings to the greater scientific community. Scholarly articles (print and electronic), dissertations, scientific posters, grant applications, and symposium speeches, however, may create prior art issues that can interfere with the important goal of obtaining a robust patent portfolio. Likewise, business discussions, offers for sale, beta testing, prototype disclosures, technical discussions at scientific conferences, business plans, and documents filed with the Securities and Exchange Commission may create similar issues.

In the United States, an inventor’s own public disclosure will not preclude patentability of the disclosed invention as long as a patent application has been filed within one year of the disclosure. This is true under the current patent laws as well as under the “new” patent laws that take effect on March 16, 2013. [8] Under the AIA, such early publications can work to an inventor’s advantage – the publication will be prior art only to a competitor’s application, thus limiting the competitor’s filing. This is only advantageous, however, if the applicant intends to file solely in the United States. Early publications will likely destroy patentability in most of the rest of the world.

In house counsel, patent managers, and technology transfer officers often struggle to implement and enforce publication policies that satisfy both the need to publish and the need to patent. Below are a few guiding principles that I hope will be useful to patent professionals or others that seek to manage publication policies:

1. Educate your inventors. One of the most effective ways to head off problems before they start is to have an informed inventor community. Regular “Patent 101” courses that teach potential inventors how patents work and their moving parts can be good preventive medicine. Topics to be covered should include the concepts of utility, novelty, obviousness, and inventorship (as opposed to authorship). The inventors should be aware of how prior art is defined and asserted against patents and patent applications. Critically, inventors should be taught how their own publications can join the list of such prior art. The inventors should be taught how to keep proper records of their inventions and how to submit invention disclosures.

2. Communicate with your inventors early and often. Be proactive in understanding the ongoing research within your sphere of influence. Attend seminars and poster sessions, join data clubs or business meetings, have hallway conversations, and always try to mine for inventions. Importantly, the inventor community should have its collective antennae up for potentially patentable inventions. These should be communicated to patent practitioners before publication to outsiders.

3. Implement an effective invention disclosure policy. Invention disclosures can be an important record of invention should the resulting patents be subject to interference proceedings or patent litigation. They also should inform patent practitioners of potentially patentable inventions with adequate time before a publication to allow for a proper investigation – and patent filing. Fillable invention disclosure forms should be readily accessible to the inventor community and submitting them to practitioners should be easy. Create a culture where inventors are motivated to file invention disclosures early.

4. Teach inventors that the invention disclosure process does not stop once an application has been filed. The time between a provisional application and a regular utility or international application is often critical. Within this one-year period, inventors may be generating additional data that can be added prior to the deadline. Such new data should not be published prior to being included in a patent application. Even after the utility or international application is filed, new data that relate to the invention should be cleared by a patent practitioner. Such new data may represent additional embodiments that go beyond the original application and may be the subject of a new patent family.

Sometimes, it can be difficult to manage publication policies where different actors have different motivations or views of patents. The principles provided above should be a good start. Please do not hesitate to reach out to me for a more detailed discussion of publication policy management.

[1] In re Droge et al., __ F.3d __ (Fed. Cir. 2012)
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
In re. Kubin, 561 F.3d 1351 (Fed. Cir. 2009)
[4] Christ and Dröge,
J. Mol. Biol. 288(5):825-36 (1999)
[5] PCT/DE00/02947. Note that Christ was published more than one year prior to the filing date.
[6] U.S. Pat. App. No. 10/082,772
[7] U.S. Pat. No. 6,143,530
[8] Under the America Invents Act (AIA), the United States will be converted from a “first to invent” to a “first inventor to file” country. Under the new statute, 35 U.S.C. §102(b)(1)(A), an inventor’s disclosure within one year of the filing of a patent application is not prior art to that application.

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