Written by: Charles Dresser

A question that often arises is: would a presentation of an invention be considered a printed publication under 35 U.S.C. §102(a)(1), potentially barring future patentability?

A court finds a disclosure to be a printed publication where it has been made publicly accessible to persons of ordinary skill in the art (POSITA). Where the disclosure is a temporary presentation, rather than a printed paper, a court considers facts of the case according to a number of factors including: (1) duration of the temporary presentation; (2) expertise of the audience; (3) if there was a reasonable expectation that the disclosure would be held secret; and (4) ease of which the temporary presentation may be copied.

For the sake of discussion, let’s imagine an engineer would like to present temporary slides, with no handout copies, to a large audience of her peers.

In this case, the engineer is (1) presumably presenting for less than a day, probably about an hour; (2) presenting to an audience with a high level of expertise; (3) there is likely no reason to believe the disclosure will be held in confidence by the audience; and (4) the available facts do not indicate the ease or difficulty of copying of the subject matter of the presentation. While the presentation is long enough to convey the information needed it is not a long duration; so duration does not weigh heavily in the analysis. Both factors two and three weigh heavily toward the presentation being found to be publicly accessible to those skilled in the art and, therefore, a printed publication. Factor four may weigh toward public accessibility, because ubiquitous camera-phones increase the ease of reproduction of slides, as many audience-members will take pictures of the slides during a temporary presentation.

Under these bare facts, a court may likely consider our engineer’s temporary presentation a printed publication, under 35 U.S.C. §102(a)(1). Accordingly, safe counsel would likely be for the engineer to file a patent application prior to presentation (or within the one-year grace period after the presentation afforded under 35 U.S.C. §102(b)(1)).

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