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Bar News - June 21, 2013

Intellectual Property Law: Disclosure: How It Can Hurt (or Help) Under the New Patent Standards


It has been about three months since the United States transitioned from a “first to invent” system to a “first to file” system under the America Invents Act, and many attorneys are still unsure how the new AIA provisions will impact the practice of patent law.

There is little (if any) guidance available on how to proceed at this time, given the dearth of case law, but there are some things we do know about how the new laws will impact inventors, businesses and attorneys.

Prior to March 16, the United States was primarily a “first to invent” system, meaning that the first (“senior”) true inventor was the actual inventor, even if a second (“junior”) inventor filed before the senior inventor. However, as of March 16, the United States joined the standard that is held by most foreign jurisdictions, which is a “first inventor to file” (FITF) system. Although the change seems subtle, it has major implications. To further complicate matters, several new provisions were enacted regarding intervening disclosures of the claimed subject matter, and their ability to be used as prior art.

Under AIA, the first inventor to file is generally protected from his or her own disclosures that occur within a one-year grace period of the patent application being filed. So, an inventor who discloses the “same subject matter” (exactly what this means has yet to be determined) cannot have that disclosure used as prior art against them. However, this can potentially have some negative impacts.

Let’s say you have a client that invents (but does not disclose) and then manufactures a particular device. Under pre-AIA laws, your client would be safe from having someone obtain superior rights over them. Such a client would generally not be interested in seeking patent protection. Under the new AIA laws, this same client is no longer protected from a competitor filing a patent that eventually issues, with claims upon which your client’s device infringes.

Welcome to the FITF system. The first inventor who files a patent application on a concept is able to obtain a patent, so long as there is no disclosure that contains the claimed subject matter. There are a few exceptions that would prevent a competitor from doing this (for example, if you can prove that the competitor “derived” his or her invention from your client’s disclosure), but they are very difficult, if not impossible, to prove.

In the case described above, if your client never disclosed the details of the device (for example, if they are software-based, and can truly only be reverse-engineered through creating a complex string of code data), he or she does not have an intervening disclosure that could be used as prior art against the competitor. Having a disclosure, such as a patent application on file, would preserve your client’s rights.

One benefit of a patent application (over other types of “disclosure”) is that the filing date of an application provides a hard and fast date on which you can claim priority, and therefore, a date after which competitors are banned from filing patents on the concept. Even if you just let the application lapse and become abandoned, competitors would still be prevented from getting a patent upon which your client’s device might potentially infringe.

It is possible for inventors to “disclose” an invention (for example, publish a paper on a company website, but not file a patent application), to prevent competitors from getting a patent on the concept. When using this option, it’s important not to leave anything “on the table.” The disclosure should cover any embodiments the inventor could conceivably create, so that a competitor is not able to read the disclosure, come up with their own improvement or alternate embodiment, and get a patent on that concept.

It is clear from the new laws that a competitor will not be able to get a patent that contains the same subject matter as what has been disclosed. What is not clear is whether a variation of that subject matter (even an obvious variant) would likewise not be patentable. So, if your client does disclose, be sure that he or she has disclosed not only the embodiment being practiced, but also other possible ways of practicing the invention.

Here’s a useful set of questions for clients with new inventions:

Have you disclosed yet?

If yes, was it a public disclosure or a private disclosure?

If private, was there non-disclosure agreement in place? If not, you may be in trouble. File a patent as soon as possible.

If public, it needs to be “same subject matter” to avoid being used as prior art against you, and it needs to be within one year of filing a patent.

If it is a product: Beware. If you do not have a patent on file, someone else (a junior inventor) could come along and file a patent on the concept.

If no, you may want to disclose and/or file to preserve your rights. Disclosing may hinder your ability to patent the invention, but it will also hinder anyone else’s ability to patent it. If you disclose, don’t leave anything on the table.

Keri Sicard is a patent attorney and senior associate at Loginov & Associates, PLLC.

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