University research leads to not only the generation of important information and knowledge, but also the creation of new intellectual property having a potential commercial use and value. To encourage this commercial use and protect its value, ownership rights in the invention are often sought in the form of a patent or copyright. This article will discuss two important issues associated with securing patent rights - public disclosure and obviousness.

Patents may be issued for any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof. However, the right to patent an invention can be lost as a result of certain activities.

Public Disclosure

Of particular relevance to those in an academic setting is the effect of public disclosure on patent rights.

In the United States if the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year prior to the date on which an application for patent is filed in this country, a patent cannot be obtained.

This publication or description must be "enabling" meaning it must describe the invention with enough detail to enable one who is skilled in the art to practice the invention.
In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor or by someone else. If the inventor describes the invention in a printed publication, uses the invention publicly, or places it on sale, he or she must apply for a patent before one year has gone by, otherwise any right to a patent in the United States will be lost.

While the United States offers inventors a one year grace period to file a patent application following a public disclosure of the invention, this is not the case in foreign countries. Outside the United States the inventor is required to file a patent application prior to the date of any public use or disclosure to preserve patent rights in those countries.

Obviousness

In general, even if the inventor does not publish an enabling description of the invention prior to filing a patent application, a public disclosure relevant to the subject matter of the application can become part of the “prior art” which will be evaluated when examining a subsequent patent application.

Although the subject matter to be patented is not exactly shown by the prior art, it must be sufficiently different from what has been used or described before so it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. Printed publications and other public disclosures, even if not enabling, may contribute to the prior art to a sufficient degree to raise issues regarding the obviousness of an application.

In summary, inventors who wish to protect the commercial value of an invention by securing a patent must be aware of the potential loss of the right to file that may result from a public disclosure of the invention prior to filing a patent application. The loss of the right to file may result either directly from the enabling disclosure or indirectly via a contribution to the prior art in the field, which results in a subsequent finding of obviousness by the patent examiner.