This is the ninth and final post in our series examining what constitutes a “printed publication.” Our first post provided an introduction and summary of the statutory basis for printed publications under 35 U.S.C. § 102; our second post examined whether patents and published patent applications can be printed publications; our third post discussed whether theses, dissertations, and other references in a library can be printed publications; our fourth post investigated under what circumstances presentations at scientific conferences can be printed publications; our fifth post considered whether technical papers, government reports, and related documents can be printed publications; our sixth post examined whether sales catalogs and technical brochures can be printed publications; our seventh post discussed whether grant proposals and submissions to regulatory agencies can be printed publications; and our eighth post investigated whether publications on the Internet and internet archives can be printed publications. These posts can be viewed here: What Constitutes a Printed Publication – Introduction and Statutory Basis – Part 1; What Constitutes a Printed Publication – Patents and Published Patent Applications – Part 2; What Constitutes a Printed Publication – Theses, Dissertations, and other References in a Library – Part 3; What Constitutes a Printed Publication – Presentations at Scientific Conferences – Part 4; What Constitutes a Printed Publication – Technical Reports, Government Reports, and Related Documents – Part 5; What Constitutes a Printed Publication – Sales Catalogs and Technical Brochures – Part 6; What Constitutes a Printed Publication – Grant Proposals and Submissions to Regulatory Agencies – Part 7; and What Constitutes a Printed Publication – Publications on the Internet and Internet Archives – Part 8
A “printed publication” can include many types of media. Regardless of the medium, a key factor is whether the reference is publicly accessible to those interested in the art. Further, whether the reference is indexed or cataloged also is a factor, but under some circumstances is not dispositive.
Considerations for oral or poster presentations include:
• Size and nature of the meeting;
• Whether the meeting is open to people interested in the subject matter of the material disclosed;
• Length of time the material was displayed;
• Simplicity or ease with which the material displayed could be copied;
• Existence (or lack thereof) of reasonable expectations that the material displayed would not be copied; and
• Whether there is a reasonable expectation of confidentiality between the distributor and the recipients of the materials
Even if there is no formal, legal obligation of confidentiality, it may still be relevant to determine whether any policies or practices would give rise to an expectation that a disclosure would remain confidential.
Because whether a disclosure constitutes a printed publication is so fact specific, out of an abundance of caution, a provisional application should be filed in advance of any public disclosure or other faculty or student activity that might be construed as a printed publication. Don’t automatically assume, however, that all public disclosures qualify as a “printed publication” under 35 U.S.C. § 102. The facts of each situation must be carefully considered in view of the current case law, which of course can evolve over time.
In any event, take steps to create a “reasonable expectation of confidentiality” for communications between faculty and students and other parties. When possible, have all parties sign a non-disclosure agreement, mark materials as “Confidential,” and restrict use of material and/or data under a Material Transfer Agreement.
Also stay tuned for developments regarding the “otherwise available to the public” provision of AIA § 102. We hope you enjoyed this series. Please feel free to contact us with any questions.