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I am a PhD student and recently found that a patent exists with significant overlap to my work. I.e. my situation is roughly similar to that described in

https://academia.stackexchange.com/questions/108112/proving-that-the-phd-work-was-done-prior-to-someone-elses-patent

except that I unfortunately did not publish my findings before the concurrent patent was filed. I am not much worried about conflicts with my research - as far as I know, research and teaching are not affected by patent law. My worry is that the patent could block various applications. In typical patent manner it claims a very wide range of applications.

More than one year before the patent was filed I mentioned the idea in talks, but none of them was video recorded. It was also discussed in various personal communication. As far as I heard about patent law, this can already qualify as sufficient publication to prevent protection by a patent. The principle is shown in my talk slides and I routinely host my slides at a cloud hoster, so it may be possible to get an external confirmation that the slides existed in this form on the date of each talk respectively. One talk was at a conference. One talk was at my institute, but was open publicly in principle, without explicit public invitation though. Listeners were not required to file non-disclosure agreements.

My question: Can this be used to invalidate or weaken the patent? What would be the process to achieve this? Yes, I know I have to talk to a lawyer, but I would prefer to know as much as possible about the process and my options beforehand. The patent is just entering review phase; it is publicly observable for almost six months now. Is there a deadline to consider for taking action?

Note: This question is out-sourced from https://academia.stackexchange.com/questions/124649/issues-with-a-patent-overlapping-my-work in the hope that it can stand here as on-topic.

I'd like to add an aspect to this question:

Can I run into (legal) issues if I simply cite my own talks? Citing a talk is less preferable in general, but it is possible. I have even seen personal communication cited in paper references. I could provocatively cite my talks, yielding a date prior to the patent. Probably the patent authors would not care, but at least it would be a statement. It could be the basic claim of prior art.

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  • was your presentation provided as handouts/copy of PPT to attendees.
    – RishiM
    Feb 15, 2019 at 3:47
  • No, no handouts were issued. (I already remember this aspect from one of the current answers.)
    – F. Xen
    Feb 16, 2019 at 14:34
  • Oral disclosures, such as lectures or nonconfidential discussions between the inventor and a third party, usually also count as prior art. The problem with oral disclosures is usually how to prove that they took place and what was disclosed exactly. In some cases a transcript or recording may be available. This can serve as evidence of what was orally disclosed, although establishing the date of the oral disclosure may still be difficult. Note: that the transcript itself also counts as prior art from the day it was published. You work on how for you prove the existence of it.
    – RishiM
    Feb 16, 2019 at 14:44

3 Answers 3

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Information presented at a conference by slides is a classic example on the edge of what qualifies as prior art, in the U.S. There are cases that have turned on whether or not paper handouts were made available. For a poster, how many days was the poster up at what kind of conference. You need a very sharp patent attorney to see if you can split hairs in your favor.

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My question: Can this be used to invalidate or weaken the patent? What would be the process to achieve this? Yes, I know I have to talk to a lawyer, but I would prefer to know as much as possible about the process and my options beforehand. The patent is just entering review phase; it is publicly observable for almost six months now. Is there a deadline to consider for taking action?

yes, any thing that is made available to public before the critical date of filing can be used against invalidation of patent. In a recent Jazz v. AmnealCAFC decision court affirmed PTAB ruling of invalidation of jazz patents. The patents are related to tracking the distribution of controlled medicinal substances, in affirming the decision the court affirmed that, the FDA held Advisory Committee (“AC”) meeting to address possible restrictions on the distribution of medicinal substance (xyrem) and, notice of the meeting which was published in the Federal Register, which included a hyperlink where materials from the meeting, including slides and transcripts of the meeting, were later posted. Importantly, the AC materials were available at the linked site prior to the critical date for each patent can be considered as prior art.

Edit: if the patent is not yet granted you can file a third party observations with USPTO.

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  • Unfortunately my slides were not publicly linked in the internet or emailed around. They were just presented at the talk to a "public" audience.
    – F. Xen
    Feb 11, 2019 at 9:40
  • Then an attorney would be in a good position to suggest what could be done
    – RishiM
    Feb 11, 2019 at 16:44
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    You might edit your answer to make it clearer that just talking is very different from information that is readily accessible on the Internet.
    – George White ♦
    Feb 11, 2019 at 21:39
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In european patent law anything that left your sphere of control is considered public, whether it was distributed or not. In other words, if you can't control if it is published anymore, because someone else knows about it and doesn't have to keep it secret, it is considered published.*

Therefore, for european patent law, your talks are considered prior art.

However, you need to prove the content of those talks was close enough to the patent in question.

*a few exceptions that don't apply here exist

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  • Regarding "content of those talks was close enough to the patent in question": It's a bit like my talk was about bicycles and the patent describes a car. However, the issue with the patent is that while it describes a car, it claims protection for all wheeled devices, i.e. also for bicyles. It would be perfectly sufficient for me if the patent could just drop this headline claim for all wheeled devices. However I think this issue forms a question on its own.
    – F. Xen
    Feb 14, 2019 at 22:31
  • @F.Xen if what you described falls under the scope of the claims it's also enough to have the claims narrowed. However the part about proving it it's problematic.
    – user18033
    Feb 15, 2019 at 13:06

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