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Sean B. Seymore

Abstract

The key question for universities is how Klopfenstein will affect the way that science professors talk about science. To answer this question, Part II explores the conflict between a professor’s need to disseminate research and the university’s potential interest in seeking patent protection. The research talk, one of the most important forums for communication in the science community, is an objective measure of research success and scholarship. When a professor produces a patentable invention, university TTOs must balance the professor’s need to discuss the research against the strict statutory requirement to file within one year of public disclosure. If a professor inadvertently triggers the § 102(b) clock, the university may lose patent protection. Part III describes the policy and statutory basis for the § 102(b) printed publication bar as interpreted by the Federal Circuit and its predecessor court. Contrary to other commentators, this Article suggests that the court’s jurisprudence has remained constant. Admittedly, however, the Federal Circuit has held that the inventor can trigger the printed publication bar without disseminating physical copies, but the focus of the inquiry remains the same: sufficient accessibility to the interested public. In Part IV, this Article applies the four factors articulated by the Klopfenstein court which aid in the § 102(b) printed publication inquiry to academic research talks. Although the Federal Circuit has suggested that a lecture that includes a transient display of visual aids is less likely to be considered a “printed publication” for § 102(b) purposes than lengthier displays, this Part concludes that the run-of-the-mill research talk, which relies heavily on visual aids, cannot survive a Klopfenstein analysis. Part V explores how professors, with proper planning, can discuss their research without destroying patentability. First, an inventor can timely file a provisional patent application, which will nullify § 102(b) if done properly. An inadequate or untimely filing, however, can create a trap for the unwary that may bar patentability. Second, universities can create an environment that gives faculty a reason to care about patentability issues. For example, universities should give professors a stake in the outcome, financial or otherwise, by encouraging and rewarding faculty entrepreneurialism. Therefore I assert that § 102(b) issues that arise in the academic context are best handled through managerial decision making; not through changing the patent laws.

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