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12.11
Do NOT Publish That Article
(if you care about patent rights in the United States)
By Steven Rubin
The America Invents Act includes
many provisions that will be analyzed and
litigated for many years. Much of the media
attention is focused on the transition from
“first to invent” to “first to file.” This
article explains what that transition really
means and how the implications are significantly
more complicated and damaging than they may
appear.
The Act was passed into law in
September 2011. It represents the most
fundamental change to patent law in more than 50
years. Supposedly, the Act is an attempt to fix a
broken patent system, yield more certainty
regarding inventorship, and harmonize the United
States patent rules with those of the rest of
the world. In reality, almost all of the
provisions are bad for the patent system and for
promoting innovation in general.
The current law relating to
inventorship (“first to invent”)
In order to fully appreciate the
change in the law, it is helpful to understand
the current law. Patent protection is available
for inventions that are new to the world. To
acquire a patent, you must file a patent
application with the Patent Office. A patent
examiner will review the application and grant a
patent if the invention is new to the world.
The current law awards a patent
to the first “inventor.” The inventor is the
person who can prove that he first conceived
of the invention and reduced the invention to
practice. Conception means that the
inventor can explain the invention to someone
else. Reduction to practice means either:
1) making a prototype or 2) filing a patent
application with the Patent Office. If there is
a dispute over who “invented” first, such as
when two inventors file patent applications
claiming the same invention, an interference
proceeding is declared in the Patent Office. In
this proceeding, two parties present evidence
regarding conception, reduction to practice, and
diligence between conception and reduction to
practice. Interference proceedings are fairly
rare in the electrical and computer science
arts. However, because these proceedings have
the potential to occur, inventors sometimes keep
an inventor journal to prove conception or
diligence if necessary. Keeping these journals
was cumbersome. There were also complaints that
even if a patent application was filed, there
was uncertainty regarding patent rights because
another inventor could come along and prove
prior conception.
Here's an example. Joe Inventor
files an application in the United States Patent
Office in March. The patent examiner reviews the
application and says that the invention is not
patentable because another patent application
disclosing the same invention was filed in
February. Joe inventor may be able to “swear
behind” the reference by averring that Joe
reduced the invention to practice in January or
conceived of the invention in January and was
diligent in filing his application in March.
Such a swearing behind may lead to the Joe being
named the appropriate “inventor” for this
invention and awarded patent rights.
Also relevant in the current law
is the concept of a grace period. When an
invention is shared with the public, such as in
a sale or publication, you have a year to file
an application with the United States Patent
Office and you may still obtain patent
protection. In contrast, most relevant countries
outside the United States have an absolute
novelty requirement where any non-confidential
disclosure, generally, would be an immediate bar
to patentability.
The new law (“first to file”)
Under the new law, the
“effective filing date” of an application is
defined as the filing date of the application
with the Patent Office. Anything prior to that
date which discloses the invention may bar
patent protection. Specifically, according to
the Act, a patent may NOT be obtained if the
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.
This change appears to
completely remove the grace period. However,
there is an important exception in the statute:
a “disclosure” made one year or less prior to
the effective filing date is NOT prior art if
the disclosure was made by the inventor or by
another who obtained the subject matter either
directly or indirectly from the inventor. This
latter concept refers to “derivation.” The idea
is that if the inventor “discloses” the
invention or someone derives from the inventors
disclosure, those events should still yield the
one year grace period.
In an example, Joe inventor
conceives of the invention in January and files
an application in June. Another person conceives
of the invention in February and files in May.
Under the old law, Joe could submit facts
indicating that he conceived of the invention
before the other person's filing and be awarded
patent rights. Under the new law, the other
person would be awarded the patent rights unless
Joe could prove that the other person derived
the invention from Joe.
Here come the problems
The term “disclosure” in the
exception is not defined. There was some
testimony that this term means — something that
makes the invention available to the public,
that is, an interested person skilled in the
field could find the disclosure through
reasonable due diligence and understand the
invention. This definition is not in the statute
and thus not necessarily the law. It also does
not appear to help us understand the
implications of sales, offers for sale, or
disclosures to small groups such as at a
conference.
One of the supposed goals of the
Act was to remove interference proceedings.
Those proceedings include archaic rules, create
potential uncertainty regarding inventorship,
and require extra work because the inventor has
to keep records. All true. So those interference
proceedings, with known rules and decades of law
are removed. And replaced with derivation
proceedings — with new rules, no case law
providing guidance, and decades of uncertainty
while we figure it out. Here's what we know
about derivation proceedings.
An applicant for a patent may
start a derivation proceeding in the Patent
Office if he files a petition within one year of
the publication of a claim that is substantially
the same as the inventor's claim. Let's break
that down. These proceedings relate to a patent
application published by the Patent Office only
– that excludes, for example, an IEEE
publication, or a blog post. Further
complicating such a petition is that it must
relate to a publication that “claims” the
invention. Patents include: 1) a specification
describing the invention and 2) claims which
define the scope of the invention (typically
starting with “What is claimed is:”). Here's the
anomaly. If a prior filed patent specification
discloses the invention but does not recite
claims directed to the same invention, the prior
filed specification could be used to invalidate
the later filed application. However, a
derivation proceeding cannot be declared because
the claims are directed to different subject
matter.
More troubling, how would you
know if someone derived an invention from your
publication? If, prior to applying for a patent,
you publish about your invention, and another
person reads that publication and subsequently
files a patent application, the wording of his
application may look very different from the
wording in the publication. Suppose the chain is
two or more entities removed. For example, you
publish about your invention, a second person blogs about the publication, and a third person
reads the blog and files an application based on
the blog? What if the blog itself is used as
prior art against your application? For example,
you publish in January, someone blogs about the
publication in February and you file a patent
application in March. The blog would be a
publication of the invention prior to your
filing date and derivation proceedings do not
appear to be available for non-patent
literature.
What do you do?
As mentioned above, one of the
supposed goals of a first to file system was to
remove interference proceedings and so there
should be less record keeping. However, you
still must retain some records in case you want
to prove that someone “derived” from your
publication. Further complicating derivations, and
perhaps requiring even more record keeping, is
that in a derivation proceeding, you may need
significantly more facts from your adversary to
prove derivation.
If an inventor calls his own
publication a “disclosure” and therefore should
be awarded the one year grace period, there is
an admission that the inventor's publication
discloses the invention. Therefore, the
publication may be used to affect the scope of a
patent. Statements that inventors may put in a
publication, a document that is generally not
reviewed by an attorney, may affect the rights
of the patent. A publication may yield all the
detriments of a provisional application without
the potential benefits. A provisional
application is an informal application that is
filed with the Patent Office. It will provide a
filing date for that which it discloses.
However, as it tends to be informal, it is
typically not reviewed as carefully as a full
non-provisional application and therefore may
include language that may be harmful to the
scope of protection.
I used to be very much opposed
to provisional applications because of their
tendency to be informal and for them to be filed
with little review from a patent attorney.
However, under the new law, such applications
may become necessary to get an application on
file quickly before a publication with at least
some attorney review. Of course, if you file
quickly, you may not put the requisite time into
making sure each term in the claims defines the
invention in the way you want it to.
So, the best advice may be, do
NOT publish that article.
This article does not
constitute legal advice as every situation is
different. Consult your attorney before making
any decisions.
Steven Rubin is
a senior member of IEEE, a corresponding member
of the IEEE-USA Intellectual Property Committee,
and the Chairman of Legal Affairs for the IEEE
Long Island Section. He is a patent attorney in
New York specializing in the protection of
electrical and computer science arts and can be
reached at
srubin@dilworthbarrese.com,
http://www.linkedin.com/pub/steve-rubin/3/895/70b
, or
516-224-1626.
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