Protecting Your Invention’s Patentability
By: Timothy Snowden, BS(BME), CPP Patent Agent
If you do not consider, prepare for, and provide for protection of your invention from the moment of conception, you may – after spending time, money, and intense labor proving and perfecting its usefulness – easily end up giving away some or all of it to competitors.
Once you conceive an invention, your most obvious task is to focus almost exclusively on developing and perfecting it, and then preparing it for successful commercialization. What is sometimes less intuitive is the necessity to constantly consider and provide for the protection of that invention from the very moment you conceive it.
It can seem over-ambitious, wasteful, or arrogant to require confidentiality, file patent applications, or refuse disclosure of ideas before you even demonstrate that your invention is something that you or anybody else would actually find useful.
However, if you do not consider, prepare for, and provide for protection of your invention from the moment of conception, you may – after spending time, money, and intense labor proving and perfecting its usefulness – easily end up giving away some or all of it to competitors.
The United States patent system is something of a trade.
You (the inventor) disclose a novel and useful invention to the public, so that other people can build on the invention, improve it, add new features, use it in other areas, and generally profit by more rapidly advancing useful tools.
In exchange, you receive a period of exclusive rights to practice your invention. You can presumably recover your investment in the invention (and hopefully make a return on that investment) during this time by either making and selling it (assuming the invention is not itself built on active patents that have not been licensed), or by licensing and/or selling the exclusive rights to others to make and sell.
The purpose of preparing for patent protection the moment you conceive your invention is to preserve the value of the disclosure you offer to the public.
Of course, because the purpose of this system is to spur technological advance by encouraging full public disclosure, exclusive rights – a patent – can only be obtained on novel advances (35 USC 102). If, by the time that the inventor files an application for patent protection, the technology was already available to the public such that other people had a reasonable understanding of it and expectation to be able to use it, the inventor would be offering the public a valueless disclosure and asking for a potentially valuable exclusive right in exchange. Furthermore, other people may well already be investing, working, and inventing based off a good-faith expectation that the disclosure was public knowledge.
It is sometimes easier to understand this concept by a ‘thought experiment’ from the opposite viewpoint:
Imagine you were to bring a product to market based on technology that was publicly available, and then find out – after spending money on tooling, manufacturing, marketing, etc – that what was previously public knowledge was now someone’s exclusive property for a period of years.
Not only would such a situation be extremely frustrating, but it would also tend to put a damper on public access to technology by discouraging commercialization. It would also inhibit innovation by making it perilous to commercialize incremental technological advances building on presumably publicly available technology.
Therefore, the purpose of preparing for patent protection the moment you conceive your invention is to preserve the value of the disclosure you offer to the public in exchange for exclusive rights to your new and useful invention for a period of time.
Towards that end, you must carefully and conscientiously keep your invention private until you submit a description of the invention that enables a person of ordinary skill in the field of the invention to make the invention without undue experimentation (the specification), and puts the public on notice of what exactly the inventor considers to be their invention (the claims).
In other words, until you file a well-drafted patent application, make sure that you don’t give it away, because, if you do, non-inventing companies will be quick to reap profits on it, and you will have no profits to re-invest in continuing to advance technology.
1. Avoid Triggering Bars to Patentability
United States law permanently bars any invention available to the public for more than one year (a ‘grace period’) from receiving a patent.
Specifically, the statute names:
- Patenting (i.e. you cannot patent an already patented – and, thus, public – invention)
- Described in a printed publication (including a published patent application, and many websites)
- In public use (note, however, that some experimental uses, even if performed in public by necessity, may not necessarily be considered 'public use')
- On sale (including most activities that courts may consider as being – or preparing for – commercial activity / commercial exploitation of the invention)
- Otherwise available to the public
In many other countries, the grace period is shorter, more restrictive, or basically nonexistent.
The very name – grace period – indicates that the presumption is that you file an application or patent before making any disclosure or performing any commercial activity. While this is an oversimplification, you are safest by remembering that presumption, and carefully analyzing the ramifications of any departure from it.
You must keep in mind that it is wise to take extraordinary precautions because, even if you do not trigger a bar to patentability by your actions before filing an application, a company looking to invalidate your patent may well be happy to creatively interpret anything and everything that remotely looks like a public disclosure, and make you pay dearly for walking anywhere close to the line. The Biblical injunction of abstaining from even the appearance of evil (1 Thess. 5:22) has a wise secondary application in patent law.
Your main concern in preserving the patentability of your invention before you file a patent application is not typically patenting.
There are a few cases where someone has filed a patent and only convinced the patent office to allow part of their claims, and then tries to file the unclaimed part after the patent is issued. Working with a good patent practitioner can help you design your patent strategy to avoid this type of mistake.
While existing patents should be evaluated as part of a Point of Novelty analysis before filing your patent application, you usually don't need to be concerned with existing patents with regard to protecting your invention from disclosure before filing a patent application.
A printed publication is a document which “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it (In re Wyer).” This encompasses not only news, journal, or magazine articles, presentation or conference proceedings, books, flyers, advertisements, and other printed publications, but electronic documents as well. Web sites, email/discussion lists (particularly if there are publicly accessible archives), blogs (person, academic, corporate, etc), and many more are all potentially invalidating 'printed publications.'
If someone else discloses your invention to the public more than 1 year before you file your patent application, your invention is still unpatentable. If, however, someone independently invents and discloses a substantially identical invention, there is no grace period, because the US (and most of the world) have a "first-to-file" patent system that grants the patent to the first true inventor to the patent office.
Furthermore, there is a risk that improvements to your invention made public by third parties may be immediately barring to your patent and effectively cancel the 1-year grace period.
Therefore, it is best policy to file a patent application for protection before you make any disclosure to anyone – particularly written disclosures. At the very least, if written disclosure is absolutely necessary before filing for reasons such as experimentation, make sure you do so under a written confidentiality agreement.
In Public Use
Using your invention in public – particularly after it is ‘ready for patenting’ (i.e. it could be sufficiently described in a patent application) – is, obviously, public disclosure. While some protection exists for experimental use, it is not always necessarily a clear line between experimental use and public, patentability-barring, use.
Therefore, again, it is best policy to file a patent application for protection before you make any disclosure or demonstration, especially in public.
The "on-sale" bar can be usefully summarized as potentially being triggered when an inventor commercially profits from their invention for over a year before filing a patent application. This on-sale bar could apply, for example, if the inventor commercially exploited the invention for more than a year before an application is filed.
Public sales more than 1 year before filing clearly start the clock on the on-sale bar; however, durability and market acceptance studies, secret sales (especially those where the existence of a sale – even without details of the invention – becomes publicly known), pre-filing manufacturing arrangements, and much more are potentially invalidating and, at least, could invite headaches in validity challenges down the road.
As with other sale and public use bars, many other countries have a more restrictive grace period for on-sale ‘use,’ or none at all.
Therefore, again, it is best policy to file a patent application for protection before you engage in any potentially ‘commercial’ activity such as engaging a manufacturer or 'pre-selling' products that incorporate the invention.
2. File Promptly
Regardless of the type of patent, the principles are the same:
1) Public use can bar you from receiving a patent.
2) The first inventor to file receives the patent.
Typically, one of your earliest steps if you have a patentable invention, and choose to pursue patent protection, is to begin the protection process by filing a “provisional patent application” – an application that puts your invention on file with the US Patent & Trademark Office (USPTO), effectively “laying claim” to a firm date from which you can show that you possessed the invention.
Work with your patent practitioner to draft this application to lay the groundwork for a future non-provisional application. You should plan on time both for you to prepare the material needed to draft the application, and for plenty of time for your patent practitioner to review your information and draft your application.
After filing a provisional application (or multiple applications as you improve your invention), you have 1 year to pursue the invention further before going through the work and cost of preparing a full non-provisional patent application.
Design (or other) Application
Alternatively, if your invention is a design (or contains a patentable design), you will likely want to file a design patent application (for which there are no provisional applications) as early as possible to “lay claim” to a filing date.
Other, less common, types of applications include plant and CBM (covered business method) patents.
Regardless of the type of patent, the principles are the same:
- Public use can bar you from receiving a patent, in the United States, after 1 year, and in in many other countries, immediately.
- The first inventor to file receives the patent, regardless of who actually invented it first.
3. Keep Copious Records
Start keeping notes in a sewn-binding notebook with dates on the relevant pages. Regular witnessing under a non-disclosure agreement by a non-interested third party (not family) capable of understanding the most technical portions of the invention is always beneficial in protection of your invention.
Under the AIA (first-to-file), proof of invention prior to filing is much less of an issue than previously (when the United States law granted the patent to the first to invent), as you can no longer swear behind someone else’s patent application. Whoever invents and files an invention first, receives the patent.
However, it can still be very helpful and even critical to keep detailed invention records. For example, invention records may be important to establish that a particular aspect of a claimed invention was developed within a grace period. Similarly, invention records may prove pivotal to demonstrating that a piece of prior art or a competing patent application was 'derived' (based on) your own work.
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