In Re Carol F. Klopfenstein and John L. Brent, Jr
380 F.3d 1345 (2004)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A reference is considered a "printed publication" under 35 U.S.C. § 102(b), barring a subsequent patent, if it was made sufficiently accessible to the public interested in the art. Public accessibility is the key inquiry, not merely whether copies were distributed or the reference was indexed in a library or database.
Facts:
- In October 1998, Carol Klopfenstein and John Brent, along with a colleague, created a printed slide presentation on poster boards describing a method for preparing extruded soy cotyledon fiber (SCF).
- The presentation, known as the 'Liu reference,' disclosed every element of the invention they would later seek to patent.
- The poster was displayed continuously for two and a half days at a meeting of the American Association of Cereal Chemists (AACC), an audience of experts in the field.
- In November 1998, the same poster presentation was displayed for less than a day at an Agriculture Experiment Station (AES) at Kansas State University.
- No copies of the presentation were disseminated at either event, nor was it ever catalogued or indexed in any library or database.
- There was no disclaimer or notice at either presentation prohibiting attendees from taking notes or photographs of the poster.
Procedural Posture:
- Carol Klopfenstein and John Brent filed patent application No. 09/699,950 with the Patent and Trademark Office (PTO) on October 30, 2000.
- A PTO examiner rejected the application, finding the claims were anticipated by a prior slide presentation known as the 'Liu reference'.
- The applicants amended their claims and argued the Liu reference was not a 'printed publication'.
- The PTO examiner issued a final rejection of the application on April 10, 2002.
- The applicants (appellants) appealed the examiner's decision to the PTO's Board of Patent Appeals and Interferences ('Board').
- The Board affirmed the examiner's rejection, holding the Liu reference was a 'printed publication' under 35 U.S.C. § 102(b).
- Klopfenstein and Brent appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a printed slide presentation, displayed on a poster board at two professional conferences for a cumulative total of three days but not formally distributed or indexed, constitute a 'printed publication' under 35 U.S.C. § 102(b) that would bar a patent application filed more than one year later?
Opinions:
Majority - Prost, Circuit Judge
Yes. A printed slide presentation displayed at professional conferences can constitute a 'printed publication' that bars a later patent application. The central inquiry is not distribution or indexing, but rather public accessibility. The court determined that the Liu reference was sufficiently accessible to the public because it was displayed for a significant duration to an audience of experts in the relevant field, there was no reasonable expectation that the material would not be copied, and the information was simple enough to be easily copied. The court reasoned that precedent establishes public accessibility as the 'touchstone' for a printed publication, with factors like distribution and indexing merely serving as proxies. Here, balancing the relevant factors showed that the invention was placed in the public domain, thus barring a patent under § 102(b).
Analysis:
This decision solidifies 'public accessibility' as the determinative factor for the 'printed publication' bar, moving away from a rigid requirement of physical distribution or library indexing. It establishes a practical, multi-factor test for analyzing temporary public displays like conference posters, providing critical guidance for academics and researchers. The ruling serves as a significant warning that presenting research at conferences before filing for a patent can result in the forfeiture of patent rights, thereby influencing the timing of disclosures and patent filings in the scientific community.
