Conferences are an important way for scientists and researchers to share and promote their research. They typically include poster presentation sessions where researchers present their findings.
Conferences help generate interest in the scientific community and related industries, and can be an important way to develop collaborations. However, inventors should be careful with what they specifically disclose in their presentations, and with the timing of their presentations with respect to filing a patent application, as conference presentations (whether their own or presented by another research group) may be cited against future patent applications and may render the products of their research unpatentable.
In Regeneron Pharmaceuticals, Inc. v Kymab Limited  APO 36, an opposition to the grant of an Australian patent application before the Australian Patent Office, the Delegate considered inter alia whether posters presented at a conference before the earliest priority date of the application were part of the prior art base for the assessment of novelty (and inventive step) for the application.
Australian Patent Application No. 2011266843 (the “Application”) in the name of Kymab Limited (“Kymab”) is the Australian National Phase Entry Application for International Patent Application No. PCT/GB2011/050019, filed on 7 January 2011. The Application claims priority from US 61/355,666 and PCT/GB2010/051122, with an earliest priority date of 17 June 2010.
The invention defined in the Application relates to the generation in non-human mammals of antibodies that comprise a human Ig variable region.
The Application was advertised as accepted on 30 April 2015. Regeneron Pharmaceuticals, Inc. (“Regeneron”) opposed grant of the Application on a number of grounds, including that the claimed invention was not novel (and inventive) in view of a number of documents. These documents included two posters presented by Regeneron researchers (the “Macdonald poster” authored by Macdonald et al; and the “Stevens poster”, authored by Stevens et al) at the 1st International MUGEN Conference on Animal Models for Human Immunological Disease, in Athens, Greece on September 2006.
Poster presentations typically involve displaying posters for the duration of one or more poster sessions during the course of a conference. Poster authors often stand beside their poster during the sessions and discuss their work with conference attendees. Although the abstracts of poster presentations are typically published online, the posters themselves are often not, as was the case for the McDonald and Stevens posters.
Section 7 of the Patents Act 1990 states that:
An invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
- prior art information (other than that mentioned in paragraph c) made publicly available in a single document or through doing a single act;
- prior art information (other than that mentioned in paragraph c) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
- prior art information contained in a single specification of the kind mentioned in subparagraph b.1 of the definition of prior art base in Schedule 1.
Schedule 1 of the Patents Act1990, defines the “prior art base” as:
- in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
- information in a document that is publicly available, whether in or out of the patent area; and
- information made publicly available through doing an act, whether in or out of the patent area.
- in relation to deciding whether an invention is or is not novel:
- information of a kind mentioned in paragraph a; and
- information contained in a published specification filed in respect of a complete application where:A. if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
B. the specification was published on or after the priority date of the claim under consideration; and
C. the information was contained in the specification on its filing date.
Document or act
Kymab argued that the posters were prior art information made public by doing an act, rather than information in a document that is publicly available, asserting that it would be considerably more difficult to establish that information had been made publicly available through doing an act. Kymab argued that the posters were similar to a PowerPoint presentation in an oral presentation, which Kymab alleged would be “an act unless the presentation is separately made available as a document”. However, the Delegate rejected this, since the information provided in the posters was in written form, and therefore considered that the information was in a document.
Whether publicly available
Regeneron submitted copies of the poster abstracts and the posters, photographic evidence of the two posters, and a declaration by Dr Macdonald, a co-author and presenter for each of the posters, confirming that the posters were presented at the MUGEN conference.
Kymab asserted that this was insufficient evidence that the posters were publicly available, arguing that each of their declarants had been unable to locate copies of the posters through their own internet searches. Kymab also cast doubt as to the time available for an attendee to view a poster, and submitted that it would be reasonable to expect that poster material would not be copied in full during a conference.
The Delegate considered that it was not unusual for copies of full posters to not be published on the internet, and further that the time available for an attendee to view the posters was irrelevant. The Delegate considered that the evidence submitted suggested that the purpose of displaying posters at conferences was to allow attendees to read the content, make notes, and discuss the information with presenters, and on that basis considered that the posters were publicly available, and therefore part of the prior art base for the purpose of assessing novelty of the Application.
Two posters as a single source of information
The Delegate further considered whether the disclosures of the Stevens and Macdonald poster presentations would be considered by the skilled person as being from the same source, and therefore able to be combined for the assessment of novelty of the Application.
The Delegate noted that the two posters had overlapping authorship, shared content relating to a mouse model (the VelocImmune mouse) and explicitly referenced each other. On the basis of the evidence submitted, the Delegate determined that the skilled person would consider the two posters as being from the same source, and therefore that the combination of posters could be considered as a single disclosure for the purpose of assessing novelty of the Application.
Relevance of decision
The opposition failed on all grounds, in part because the Delegate considered that Regeneron had not established that a mouse produced according to the information provided in the Macdonald and Stevens posters would inevitably contain the claimed expression profile. However, this decision confirms that a poster presentation could potentially destroy the novelty of a later filed application, and suggests that two or more poster presentations at the same conference with overlapping author lists may together anticipate a later filed application. Although in this case the poster presentations were disclosures by researchers not related to the applicant of the later filed patent application, this decision highlights the risk for inventors disclosing their own work at a conference before filing a patent application.
Although, as discussed in our recent article on prior disclosures, some jurisdictions, including Australia, have grace period provisions that may prevent a prior disclosure (such as a poster presentation) anticipating a later application (or rendering it obvious), these are only applicable in certain circumstances, and we recommend as best practice that a patent application is filed before an inventor presents their work at a conference.
However, if this is not possible, then as a minimum any information that could enable a skilled person to perform the invention should be removed from a talk or poster before their public disclosure. For example, a recommended approach is to focus the talk or poster on favourable results arising from performing the invention without disclosing the key details of the invention necessary to arrive at those results.
you would like advice in relation to whether a planned conference presentation or
other public disclosure would affect the patentability of an invention, or
assistance in drafting and filing a patent application before such a
disclosure, please contact us.