Don’t Lose the Race to the Patent Office

Warning

Louisiana inventors and business owners should understand the basics of the new patent law following the Leahy Smith America Invents Act. One of the most important aspects of the new patent law is how the Patent Office will be judging patent applications to determine if an invention is “new.” As most people would expect, an invention that is not new, i.e. does not meet the novelty requirement of the patent law, is not entitled to patent protection. 35 U.S.C. 102(a)(1) lays out five important ways that an invention would not be considered new. 35 U.S.C. 102(a) as amended by the Leahy Smith America Invents Act, currently in effect, reads in part:

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or […]

Courts have and continue to interpret the meaning of the terms and phrases used in the statute, but the language of the new law sets up what many have described as a “race to the Patent Office.” Under the old law an inventor could get credit for being the first inventor by showing that he or she was the first to conceive of an idea. However, under the new law the application is judged based on the “effective filing date.”

The “race to the Patent Office” may be understood by a pair of examples with very different outcomes. In the first example, the applicant quickly files patent application before a competitor publishes a description of basically the same invention preserving the applicant’s potential patent rights. In the second example, the applicant loses out on potential patent rights by failing to get a patent application filed before the competitor publishes the description of basically the same invention. The examples simply illustrate why it is important to get a patent application filed sooner rather than later. Disclosures of others do not need to closely match the details of an application in order to be very damaging to that application. A Louisiana patent attorney can help assess the individual risks associated with attempting to protect an invention.

A patent applicant may be best served by keeping an invention a complete secret and not using it productively until a patent application is filed. Moving diligently and quickly toward the filing of the patent application on the secret invention is also generally a good idea.

 

Perilous Publications

35 U.S.C. 102(b) contains an exception to the general rule laid out above, but as described below reliance on this exception does not come with guarantees.

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or […]

In a manner reminiscent of patent law prior to the Leahy Smith America Invents Act, it is possible to disclose the details of an invention and later apply for a patent. However, critical protections for later filed applications are not available under the new law. For example, an applicant who discloses his or her invention and then finds that a competitor has disclosed a different but related concept prior to that applicant filing for a patent may end up being unable to achieve an enforceable patent. Because the law is still relatively new, it would be inadvisable to rely on the potentially ambiguous disclosure exception of that law unless necessary. In short, the interpretation of 35 U.S.C. 102(b)(1) is typically irrelevant to a patent applicant that moved quickly to file on a secret invention.