Bar News - December 17, 2010
Business Law: Four Key Pieces of Advice You Should Give Potential Patentees
By: Charles Holoubek
I know what you’re thinking: "Charles, I’m not a patent attorney. If one of my clients comes to me seeking patent protection, I am not going to advise him at all. I’ll give him your name and wish him best of luck with his new invention."
All too often, though, from the time the inventors leave your office to the time they visit mine, many will unknowingly initiate – or fail to initiate –certain actions which will drastically narrow, or even completely bar, any available patent protection we may later be able to secure for them. Trust me, there is no joy in having to inform an inventor that his formerly patentable invention is no longer patentable…because of something he inadvertently did or didn’t do.
This is where you – YOU – can be the inventor’s first, best champion. By passing your clients these four key pieces of advice, you could be making all the difference in the future prospects of your clients’ inventions.
#1 Keep It Secret
Your client created an extraordinary invention – genius even – and he can’t wait to go show the world all its wonders. This would be a very bad idea, potentially setting off the Patent Act’s public use/on-sale statutory bars. Instead, until he speaks with a patent attorney (and subsequently files an application), he needs to keep his invention private and make these following seven restrictions his new mantra:
How strict is the Court on the "no public use" restriction? Back in the 1880’s, Samuel H. Barnes invented an improved corset and gave it to his fiancée Frances. Even though no member of the public actually "saw" the inventive corset that Frances wore underneath all her layers of Victorian couture, the Supreme Court ruled, in Egbert v. Lippmann, 104 U.S. 333 (1881), that Samuel’s gift to Frances – his fiancée – was a public disclosure and that her admittedly demur use of the invention was still "public." The patent was barred.
- Do not describe my invention to others.
- Do not show my invention to others.
- Do not discuss my invention with others.
- Do not share drawings or written descriptions of my invention with others.
- Do not use my invention in public.
- Do not sell my invention.
- Do not offer to sell my invention.
#2 Do Not Delay
Your client should call a patent attorney the very same day he leaves your office/gets off the phone with you; the next day at the latest. In the hard, cold world of patent prosecution, the deadlines are short, strict, and for the most part incurable if your client misses them by even one day. One Day.
Under US law, inventors have only one year from the date anyone sells, offers to sell or publicly uses an embodiment of their invention in the US, or anyone describes their invention in a printed publication anywhere in the world, to file a patent application. Foreign patent regimes can be even more exacting in this regard. Many countries operate under a "strict novelty" standard, meaning that your client will lose all chance of protection if a description of his invention is published anywhere in the world even one day before your client files his application. Delay is deadly to patents.
If your client sincerely believes in his invention, he should do himself a big favour and expeditiously contact a patent attorney to get the process started.
#3 Detailed, Dated Documentation
It may become necessary during prosecution, or later in litigation, to prove your client conceived and reduced his invention to practice some time before the date that his application is actually filed. It may be obvious that your client did not, all in the same day, conceive of an invention, contact a patent attorney, have the attorney draft an application, and get the application filed, but that is the legal fiction the Patent Office operates under…unless there is evidence to prove otherwise. A dated lab notebook is wonderful evidence, but your client should also hold onto any other documentation he has that demonstrates his conception of the invention and efforts he took to reduce it to practice. It might become critically important later on down the line.
#4 Don’t Go It Alone
While your client could legally draft and file his own patent application, that is rarely a wise course of action. Successfully drafting a high-quality, strong patent application is a very complex and nuanced task. Scientists and engineers – who have also completed law school and sat for and passed the patent bar exam – spend years of daily practice writing patent applications to become fully competent. "The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy ..." Topliff v. Topliff, 145 U.S. 156, 171 (1892). A strong patent and a weak patent can look deceptively similar, but if the patent is ever enforced and litigated, a patent litigator will readily and gleefully spot the differences.
So, hang on to this article. Cut it out, copy it and put it in a file under the heading "Patent Inquiries." The next time current or potential clients call you up wanting to get a patent, dig out the article and share a copy with them. They will be thankful to you for the advice, and you, as their first, best champion, may just save them from inadvertently sabotaging their future patent.
Charles Holoubek, chair of the Intellectual Property Section of the NH Bar, is a registered patent attorney. He practices at the Concord IP firm of Davis and Bujold, PLLC and can be reached at email@example.com.