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Section
102 states that an invention must be "novel" over
the "prior art" to be eligible for a utility or
design patent. "Novel" means "new" and "prior art"
means other patents, published research or white
papers, articles, or other publications. The important
thing to know is that if the invention has previously
been described, patented, or invented by someone
else, whether in the U.S. or some foreign country,
you cannot patent it. The relevant language of 35
U.S.C. § 102 states:
A person shall be entitled to a patent unless-(a)
the invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention
thereof by the applicant for patent…
If you think you have a patentable idea, you can
do your own preliminary "prior art" search for free
to see if someone else has already had that idea.
You can search on the PTO
website using the key terms in your invention,
the names of inventors, or company names to see
what others have patented.
Additionally, it is wise to do searches on the Internet
and review technical and engineering journals. Even
if others have disclosed inventions that seem similar
to yours, your invention may be a patentable improvement
of their invention. If you think you have a novel
idea, you should consult an attorney who specializes
in patent prosecution (the process of having your
application reviewed by a PTO examiner) to help
you confirm that your invention is truly novel over
the prior art.
Another criterion important to consider before filing
a patent application is described by the following
language from from 35 U.S.C. § 102:
A person shall be entitled to a patent unless-(b)
the invention was patented or described in a printed
publication in this or a foreign country or in public
use or on sale in this country, more than one year
prior to the date of the application for patent…
In other words, Section 102 gives you a one-year
grace period to test the commercial success of your
invention before filing a patent application. Thus,
you can publish information about the invention
(for example, a white paper or an article), use
the invention publicly, or offer it for sale, but
you must file a patent application by the one-year
anniversary of the publication, use, or sale of
your invention to obtain a patent. After one year
you are "statutorily barred" from obtaining a patent.
Under the statute, your own activities (and the
activities of others) have become prior art.
Note: you may still be able to obtain a patent on
any "improvement" over the original invention, as
long as that improvement was not published, used,
or sold more than one year previously.
Public Use
The public-use bar frequently creates problems because
courts have held that many activities that do not
seem very public are indeed public uses. Take, for
example, the famous corset-spring case. The inventor
improved corset springs and permitted a female friend
to wear the new corset. No member of the general
public saw the invention nor had any inkling that
she was wearing an invention, because it was hidden
under her clothing. Yet the Supreme Court held that
this was a public use. To avoid being barred by
public use, you will want to keep control over your
invention and use it only privately in your home
and office.
Additionally, the secret use of a manufacturing
process can get you into trouble if the process
is used to make a product that is then sold publicly.
Although there may be nothing public about the process
itself, the courts have decided that this is a public
use because the goods are sold to the public.
Sales
There are a number of tricky aspects to the on-sale
bar. For example, you don't necessarily need an
actual sale, but a mere offer for sale will start
the clock ticking. So will a secret or confidential
sale, or a "sale" for which there was no payment.
The customer does not even need to know that your
invention was inside the product that was sold.
Bottom line: almost any offer for sale or sale will
start the clock ticking so long as the invention
is "ready" for patenting.
"Experimental use" is considered an exception to
the public-use and on-sale bars. If you have publicly
used or sold your invention to get consumer feedback
on whether your invention is commercially viable,
you may be able to claim that your activities were
experimental. Unfortunately, there are no set criteria
to determine whether a use is sufficiently experimental
for patent law purposes, so this exception should
not be relied on.
Publications
A publication is another event that starts the clock
ticking on the one-year grace period. The publication
bar is straightforward: if you publish an article
or white paper describing your invention, you must
file your patent application within one year of
the date of publication. It's important to consult
an attorney to determine whether something you have
written constitutes a "publication." For example,
a single copy of your graduate thesis available
on a dusty shelf in a library may be considered
a publication for the purpose of establishing a
bar.
With respect to these statutory bars, it is best
to file an application within one year of the earliest
date that could possibly be considered a public-use,
on-sale event, or a publication.
Unpleasant Surprises
Some prior art is not secret, but nevertheless may
be difficult to know about ahead of time (such as
articles written in a foreign language). Other prior
art is truly secret, but can still bar you from
getting a patent. For example, a pending U.S. patent
application, which in some circumstances is kept
secret until the patent issues, can be prior art
for your invention as of its filing date. Thus,
despite doing a thorough search before filing your
application, it is possible that a piece of prior
art that you could not have known about may be cited
by the PTO examiner, rendering your invention unpatentable.
You can be found to infringe someone else's patent
even if you started making, using or selling the
invention claimed by the patent before their patent
issued. As described above, if you publicly used
or sold the claimed invention more than one year
before the patent's filing date, your invention
would constitute prior art and would invalidate
the other person's patent.
It is important to note that the United States is
one of the few countries that allows the one-year
grace period. The vast majority of other countries
require you to file an application for a patent
before your invention is publicly used or sold.
The exception is that if you file in the United
States first before you publicly use or sell your
invention, then you will at least be able to take
advantage of the U.S. grace period when you file
applications in other countries (so long as they
are signatories of the Paris Convention or some
other treaty with the U.S.)
One last caution: it takes some time to prepare
a patent application for filing, so remember to
meet with your attorney well before the deadline
for the statutory bar. You may want to consider
provisional patent applications" while waiting
for your patent to file.
What Happens When Someone
Else Invents Your Invention?
As set forth in 35 U.S.C. § 102(g), when two inventors
are each pursuing a U.S. patent for the same invention
at roughly the same time, priority is given to the
inventor who can prove that he or she invented the
invention first. Priority is determined by an adversarial
process called an "interference" that takes place
within the PTO.
The inventor with the best evidence wins the interference.
So you should get into the practice of keeping detailed,
contemporaneous lab notebooks of the development
of your invention, preferably witnessed by objective
third parties at frequent intervals. You should
document the date of conception (the birth of your
idea), the date of reduction to practice (the date
when your invention worked), and your diligence
from the time of conception to the time you reduced
the invention to practice. If you cannot supply
adequate documentary proof of the date of invention,
you will be stuck with the application's filing
date. |
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