For startups and individual inventors without customers, this could be a financial drain and difficult to afford for an unproven product. But waiting could be a bigger financial risk. For example, if you discussed the invention with someone without a binding nondisclosure agreement and that person discloses your invention publicly, it could undermine your patent rights. Merely revealing it publicly is a problem.
There is, however, a one-year grace period for your own public disclosures. That one year grace period is intended to give inventors a chance to test the market.
For inventors the first-to-file patent system will be a huge change. The best thing is to consult a patent attorney as early in the invention process as possible so you know how to protect your invention. An excellent article. This patent law change is HUGE for small business, and will be more expensive. It probably needed to be done, but effects on small business owners who are bootstrapping could be very negative over the long term.
Kip, The Patent Office has decreased some filing fees for smaller businesses. While that is helpful, the filing fees are just a small part of the costs of a patent application.
What good is it to say that a commonly owned reference is not prior art under a 2? If it can still be prior art under and thanks to judicially created double patenting then Congress has enacted something without any meaning.
Then what does b 2 C mean? It seems that your reading is that this section provides no benefit whatsoever. A patent of addition remains tied to its parent, remaining in-force only for as long as the original patent lives — much like the effect of a terminal disclaimer, but with the benefit that no maintenance fees are payable on the dependent patent.
You could compare it to a CIP with an obviousness-type double patenting problem! Sorry, I am unwilling to believe that that much power is left in the hands of unaccountable judges. If Equity overcomes law so easily, then as Gene asks, why have law at all? The statutory language means exactly what it says, no more, no less. Thus cases like Chester v. Miller , F. So I can give you an answer that makes sense in your frame of reference, who are you?
Not by name, please stay anonymous Are you an examiner, patent agent, attorney, etc. In what country? What experience do you have with the American legal system? Thanks David — US based primarily, prosecution with limited litigation experience — but with extensive engineering and management experience start-ups to mid-sized firms from my pre-law era.
Judges make law. They have been making law since the late s, several hundred years before parliament had the power to make law. The constitutional power of U. The doctrines discussed here, Metallizing Engineering secret commercial use as a non-statutory bar and obviousness-type double patenting, are both entirely judge-made law.
In the U. I think the Constitution was more than a little bit specific about where that power properly lies. All of section 2 is a very interesting reminder of how things work here in the US, and especially section 2.
Also the principle of the triumvirate of authority to create law and create a system of checks and balances would seem to apply in this instance. Under our Constitution as it actually exists, who makes the decisions about what a statute means, and whether to fill in gaps where a legislature neglected to speak, and how?
The Constitution expressly places that power in the judiciary. S legal system works. At the very least, you should fully inform your clients of your approach before you accept a retainer. The previously known stress cases are ignored and little attempt is made to find all new stress cases; for testing before the system is approved and placed into operation. The system is not questioned about what will happen until after someone is later hurt by the system in a stress-case.
Well no point in philosophizing anymore. The stuff hit the fan on March 16, Our Titanic is taking on water. Yousuf, U. See also Isbrandtsen Co. Johnson, U. I take some of the blame for the apparent condescension from Mr. Boundy, as my post at 30 was not clear enough regarding the accepted role of common law in the IP realm. However, there remains a world of difference between interpretation and gap filliing and the equally apparent and Lochnerian insertion of writing patent law that does not have a basis in the Congress determined schemes.
Patents by definition are available to the public. Trade secrets are just that, meant to be private and away from the public. Thus, if for instance Coca-Cola would make their formula a patent, the public would see it.
This would harm Coca-Cola more than it would help them. There might not be value for Coca-Cola, but if they wanted to patent their formula they now can, which is ridiculous since it has been used in commerce for over years. For others with trade secrets it might make sense to obtain a patent and thereby inform the public of the trade secret in exchange for patent rights they could assert against others. Our website uses cookies to provide you with a better experience. Read our privacy policy for more information.
Accept and Close. Gene Quinn 9 years ago. Join the Discussion 39 comments so far. Mark Summerfield March 16, pm Perhaps surprisingly, the patenting of long-held trade secrets is possible in many countries, including throughout Europe under the European Patent Convention.
It is indeed a brave new world. It is a mistake of conflation to mix the two. Paul F. Stan E. Gene Quinn March 17, pm Paul- I disagree that obviousness type double patenting is still in effect. There may be exceptions in some cases involving patents with multiple claims or foreign patent registration dates. This system brings the U. As a result, an inventor no longer can get a patent in the U. An inventor should try to file their application with the USPTO as soon as they have determined that their invention is eligible for a patent.
The main way to establish their rights efficiently is to file a provisional patent application. This is a streamlined version of the regular patent application that can be filed more cheaply and quickly. If an inventor succeeds in getting a provisional patent, they will get patent pending status for the invention.
This may place them in a stronger position for negotiating with potential customers. Read more here about provisional patent applications.
Many patent scholars fear that the first-to-file rule undermines fairness and equality in patent law. They argue that it places inventors with fewer resources at a disadvantage. It may favor corporate applicants over individuals, and it may favor applicants who are represented by attorneys over applicants who choose to file on their own. A race to the patent office also may discourage inventors from taking the time to develop their invention to make it as useful as possible.
Certain entities build their business on buying patents and bringing infringement actions against other entities, without ever putting the patents that they own to a productive use.
The first-to-file rule is much simpler and easier to administer than the first-to-invent system. If multiple inventors argued that they had priority for a patent, the USPTO needed to hold a separate hearing for each inventor, at which they would explain when they created and developed the invention.
Thus, it seems that the grace-period will only be useful in the limited, and extremely unlikely, situation where the subsequent disclosure is nearly identical to the first disclosure. Of course, the USPTO says that such disclosures do not have to be verbatim or ipsissimis verbis , but again, telling us what they do not have to be is not nearly as useful or informative as telling us what they do need to be.
But the limitation of the grace-period is even more obvious when you consider what the USPTO has said their interpretation is with respect to genus-species disclosures. Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening grace period disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the intervening grace period disclosure of the alternative species would be available as prior art under AIA 35 U.
While the disclosure of a genus and a subsequent disclosure of a species cannot be used as prior art, the subsequent disclosure of a genus or different species can be prior art. Again, one has to question whether in this circumstance that which can be used as prior art may render the underlying disclosed subject matter unpatentable pursuant to 35 U.
The grace-period questions raised about the applicability of prior art under 35 U. What does this mean? It means first to file absolutely needs to be treated as file first! While we do not now have a pure first to file system, anyone who relies on the existence of a grace period really is foolish in the extreme.
File first. File often. With any invention there will be a stream of conceptions and reductions to practice. File as soon as you have an articulated invention that is susceptible to adequate description through words and drawings. Even if that means filing serial provisional patent applications prior to filing a non-provisional patent application that wraps everything together.
It is important to understand that under the new law an inventor is always better off filing sooner rather than later. Nevertheless, there is not a true race to the Patent Office set up by the new law.
In order to be awarded a patent one must still be an inventor. Those who learn of an invention cannot now, nor could they previously under the old law, beat the inventor to the Patent Office and obtain a patent. Inventors must contribute conception and stealing from another provides no conception that will support the awarding of a patent.
Of course, if you have a client that comes to you to seek a patent after they have publicly disclosed it would be worthwhile to file a patent application immediately. This is true because many expect that the USPTO interpretation on the grace-period and subsequent filing will be modified by the courts, so if there is any argument that can be made you should file and let things sort out in the courts as they inevitably will determine the meaning of the grace period.
But despite the grace period being infinitely small, it does still exist. Of course, it is still only a one year grace period. He is a patent attorney and a leading commentator on patent law and innovation policy.
Quinn has twice been named one of the top 50 most influential people in IP by Managing IP Magazine, in both and From , Mr. Read more. Michael Feigin, Esq. To earn its full effect, a provisional needs be drafted with as much care read that as time and money as a non-provisional. The grace period has been eliminated by the AIA. On sale has a long judicial interpretation to include any activity toward commercialization including disclosures at trade shows, commissioning prototypes and soliciting investment for the invention.
Inventors need to be made aware of this chilling fact that changes the accepted practice of inventors for generations. Gene, Thank you for including the last paragraph in your article.
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