The following is a Guest Post by David J French, an Ottawa patent attorney with 35 years experience practicing before the Canadian and United States Patent Offices.

David J. French.

I have written this posting for NewEnergyandFuel in response to Mr. Westenhaus’ post July 24th entitled, US Patent Office Starts Regulations From New Patent Law.  Here is my perspective.

The most significant feature for discussion in these posting, patentability requirements, will come into effect on March 16, 2013

The US patent law of 1836 was a revolutionary piece of legislation.  Patent laws around the world were then quite primitive.  Even the US patent law from 1791 two 1836 fell into that category.  The US revisions of 1836 created a Patent Office with a Commissioner of Patents, a mandate for applications to be examined and strict criteria for when a patent could be granted.  Foremost amongst those criteria were the “novelty” requirements.  From 1836 to March 16, 2013 a US patent may only be granted for an idea that had not been:

1.  disclosed in a printed publication issued anywhere in the world;
2.  been in public use in the United States, or
3.  been on sale in the United States

for more than one year prior to the applicant’ s actual US patent application filing date.

Additionally, only an inventor could file to initiate a patent application (you could not file for someone else’s idea) and you had to be the first inventor, at least within the United States, when you thought of your idea.  The one-year permitted delay referenced above did not apply to this requirement of being the first inventor.  Now all of that has been changed.

As of March 16, 2013 to obtain a patent you must not only be a true inventor, but you must place a patent application on file at least somewhere in the world before the invention has been:

1.  made “available to the public” anywhere in the world by any means, by anyone, or by the inventor for more than one year;
2.  in public use anywhere in the world by anyone, or by the inventor for more than one year, or
3.  offered for sale anywhere in the world by anyone, or by the inventor for more than one year.

In view of the broad scope of the item 1, above, one may ask why items 2 and 3 are present.  Presumably, a public use or offer for sale that does not actually disclose what the invention is will be a bar to granting a patent.  Such events will have effect immediately if these events occur independently of the inventor and one year after these events if it is the inventor who has caused the public use or offer for sale to occur. In this sense, the US law is less generous, or more harsh, then the corresponding patent laws in Europe, Canada and elsewhere. Those laws only include item 1, above.

That is the new law. It is not likely to be changed for a number of years. The new law went through four versions before four Congresses over eight years and was very difficult to pass because of the intensive lobbying over the change from a first-to-invent system to a first-to-file system, amongst other issues.

I predict that there will be a lot of problems arising in the course of working-out the consequences of the America Invents Act.  The patent profession in the United States does not know what meaning is going to give be given to the expression “available to the public”.  This phrase has been used in European jurisprudence for over 30 years.  But the great majority of US attorneys have no interest in studying jurisprudence arising outside of the United States. I know how it has been interpreted in other countries and they have still not worked-out all the details even after 30 years.

One feature of the jurisprudence in Europe is that “available to the public” has been interpreted to mean that a disclosure has to tell enough about an invention to enable others to make the invention.  That is, to build it in a form that will work.  The disclosure has to be “enabling”.  Thus, in a case that occurred in the United Kingdom, a newspaper photograph of an inventor with his member of Parliament in front of a folding staircase that incorporated the invention was not held to be a bar to the subsequent filing of a patent application for the folding staircase.  The photograph did not show how the mechanism for folding the staircase actually worked.  Therefore the photograph was not a bar to patenting.   It will probably take some years before such a principle, or something similar, is worked-out before the US courts.

Additionally, the new US law is unique in allowing an inventor to achieve the equivalent of a patent filing by “publicly disclosing” their invention. This is a stunning initiative in the world of patent legislation. It was hardly discussed in Congress and I doubt that more than a dozen or so people understood its potential consequences as the legislation was being passed.  I predict that it will be discovered after four or five years that to qualify under this section the disclosure will have to be thorough and complete.  It will have to be, I predict, “enabling”.  The safest type of disclosure that will meet the completeness requirement will be the sale of an article embodying the invention.

As indicated above, the proceedings before Congress leading to the passage of this new law were highly contentious.  Numerous congressional committee meetings were held.  Lobbying was extensive.  The fight over first-to-file was vigorous, if not vicious.  In my view, the distinction between a first-to-file and first-to-invent criterion for sorting out who is to obtain a patent is a minor issue.

(Regarding this change it must be clarified that we are comparing a first-inventor-to-file and first-inventor-to-invent requirement.  In both cases, only a true inventor can initiate an application to obtain a valid patent.  “First-to-file” does not mean that people can file valid patent applications for ideas that they hear about from others.)

Why do I think that the first-to-file change is a minor issue?  Conflicts under the present law between inventors who file for the same idea arise in less than 1% of all filings before the US Patent Office.  The more significant change is the adoption of the European standard of “absolute world novelty” as a requirement for granting a patent on an idea.  Essentially, under the new law, an idea will have to be pristine in its novelty on a world-wide basis.   This new novelty standard will limit patenting in some cases that would otherwise go forward under the present US law, in force since 1836.  But only a minority of patent applications will be affected by this change.

Under the first-to-file system inventors were always expected to keep records of their progress in arriving at their invention in case a conflict might arise.  Few private inventors have done that and even employed inventors working for corporations have been negligent in this regard.  If you do not have adequate records, your assertion that you made your invention by a certain date may be rejected.  But in most cases it does not matter; conflicts based on intervening activities by others do not arise in most cases.

Under the new law, in most cases, failure to file promptly after you think of your idea will not matter.  It will not matter simply because no intervening conflicting activities will present themselves.  By “intervening conflicting activities” I refer to either the filing of a patent application by a stranger, or the public disclosure of the idea by a stranger.  Either event would have a negative impact on another person’s, another inventor’s, right to obtain a patent. I predict that such events would only occur in a minority of cases

But in a relatively small number of cases, delay in filing a patent application will result in the loss of valuable patent rights.   If others disclose your idea publicly before you file, or if someone files an application disclosing the same ideas (whether they are trying to patent them or not), then any later application by yourself will be ineffective.  It will be rejected based on such prior disclosures.  That is the effect of the new law.  Unfortunately, this may happen in respect of valuable innovations.

Both the old law and the new law barred the granting of valid patent rights for things that have already been “made available to the public” in some way.  But the scope of what qualifies as prior art has been broadened.  That is the killer: if someone else publicly discloses an idea anywhere in any way then this will defeat your right to file a patent for that idea even if you invented it independently.  The difference between the old law and the new law is whether the public disclosure occurs before you think of the idea yourself, or before you file an application describing your idea,  (or publicly disclose your idea in a complete manner – equivalent to filing an application).

Hardly anyone amongst the US patent profession is describing the law in these terms.  They all act as if first-to-file is the big issue.  It is not.  It is the new novelty requirements that count.  My advice on how to respond under the new law is to: “file early and file often”.  That advice is rock solid.  And there is an advantage to the first-to-file system.  It will encourage inventors to think in terms of writing-up their ideas.  This will help them make better inventions.

David French is a retired patent attorney and the principal and CEO of Second Counsel Services.  Second Counsel provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit:  www.SecondCounsel.com.

David French is prepared to address questions included as commentaries to any of his postings or by direct email. In particular, he would like to learn what people need to know in order to better understand patents.


Comments

2 Comments so far

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