Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 108

As we have already discussed, if an invention was in public use or on sale, or offered for sale anywhere more than a year before the date that the invention is initially disclosed to the patent attorney, patent protection cannot be obtained for that particular invention. In those cases, I have usually advised inventors to develop an improvement to their invention, and then a patent application can be filed covering the improvement. However, the prior public activities of the inventor more than a year before the filing of the patent application may have destroyed any patent rights the inventor might have obtained in the original invention.

Also, determine whether or not there has been a public disclosure or public knowledge of the invention less than a year before the date of the invention disclosure meeting, since it is important to know whether foreign patent rights have been affected by such disclosure. It is also important to know when the 1‐year U.S. “statutory bar” will be effective due to a public disclosure of the invention, to enable a patent application to be filed before the 1 year bar date.

In making your disclosure to the patent attorney, it is important to indicate what acts took place and what facts surround the circumstances relating to any prior disclosure of your invention that was made to others, either prior to a year or within a year of the invention disclosure meeting. It's possible that the public disclosures you made were only of an experimental version of your invention, and therefore did not comprise disclosure of a complete invention such as will destroy patent rights. If there has been no prior public disclosure of the invention, the patent attorney will most assuredly advise you to refrain from disclosing, publicly using, selling, or offering to sell the invention prior to the date the patent application is actually lodged with the U.S. Patent & Trademark Office. The potential adverse effects of such public disclosures on patent rights need not be repeated.

You must also disclose to the patent attorney how you gained knowledge of the concept of your invention. Obviously, if you derived the invention from a showing of the same invention from another source, you are not the first inventor and cannot obtain a patent. Also, an applicant cannot discover an invention in another country and apply for a patent in the United States, since the applicant cannot comply with that portion of the statute requiring that the inventor certify that he or she is the original and first inventor.

Since “experimental use” is not a public use of a complete invention and therefore is not a bar to obtaining a U.S. patent, when meeting with the patent attorney for the first time, the inventor should, in describing all outside uses and showings of the invention to others, present sufficient facts to enable the patent attorney to determine whether or not such use could be classified as “experimental” or not. Thus, even though you may have previously exposed a portion of the subject of the invention to third parties, the attorney may advise you that this is not necessarily a bar to patentability. Also, it is important to advise the attorney of any prior publication(s) by the inventor or inventors to determine when and which features of the invention were disclosed, and which were not disclosed in such prior publications. Non‐disclosed features can still form the subject matter of a patent application. Keep in mind also that disclosures to others made under the aegis of a signed NDA are not “public” disclosures, and are not a bar to obtaining a patent.