Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 83

The U.S. Patent Law, at 35 U.S.C. §102, as amended by the AIA, states that an inventor shall be entitled to a patent unless the invention (1) was known or used by others, or (2) patented or described in a printed publication, or (3) placed on sale or sold, anywhere in the world, before the patent application filing date. Therefore, if the same invention was made public by someone else prior to your filing date, you cannot obtain a patent.

This provision of the Patent Law also prevents a person who merely recognizes the commercial merits of an existing product, or who discovers the product in an ancient document, in the U.S. or a foreign country, or from another pre‐existing source, from properly obtaining a U.S. patent, since patents in the United States are granted only to “an inventor.” The activities of others who may have publicly disclosed the same invention as yours, without necessarily obtaining any patent protection for that invention, may defeat your right to a patent if those activities occurred prior to your patent application filing date.

A further provision of the Patent Law, which was touched upon previously, prohibits an inventor from obtaining a patent if the invention (1) was patented or described in a printed publication in this or a foreign country by the inventor, or (2) was in public use, on sale, offered for sale, or publicly available anywhere more than one year prior to the date of the filing of the application for patent in the United States as a result of actions of the inventor. This is a very important provision, and controls the time in which patent protection must be applied for, or patent protection is lost. This is the provision that includes the U.S. “grace period” requiring that a patent application be filed within one year from the date of first public disclosure or publication anywhere of the invention. The purpose of this provision is to require inventors to make a prompt decision regarding filing a patent application, so that the public will obtain the benefit of the inventor’s work upon expiration of the patent that much earlier. One who suppresses, abandons‚ or conceals their invention is not entitled to patent protection.

Under this provision of the Patent Law, the activities of the inventor or inventors themselves, as well as the activities of others‚ may defeat rights to patents. For example, if one completes an invention, and then publishes a paper or delivers a speech that is later furnished to members of the audience in paper or electronic form, such as a paper or speech delivered to a professional or a trade group, that inventor then has one year from the time of that publication or disclosure to file a U.S. patent application. Therefore, it is imperative that inventors consider the patentability of their inventions during that first year period, or face the loss of all patent protection.

It is also important to note what was briefly discussed previously about avoiding the loss of foreign patent rights. If at all possible, it is highly recommended to seek the advice of a patent professional prior to any public disclosure of any invention, so that foreign patent rights will not be lost. In today’s global economy, I cannot think of one invention that would have use solely in the United States, and not be potentially marketable in other countries throughout the world in one form or another.

If during the development of your invention, it becomes necessary to disclose the invention outside your company, or outside the group of inventors working on the invention, such disclosure should be made only after a confidential non‐disclosure agreement has been signed by the recipient party to whom the disclosure is being made. The non‐disclosure agreement should state, among other things, that the recipient party will not use the disclosed information for its own benefit, nor disclose the subject matter of your invention to anyone else, without your prior written consent. In addition, all information and physical devices given to the recipient party relating to the invention should be clearly and boldly marked CONFIDENTIAL. This will establish later, if necessary, that the disclosure of the invention to the recipient party was confidential, and was not a “public” disclosure under the Patent Laws. Taking these steps, therefore, allows you to privately disclose your invention to another, without starting the one‐year clock from running under the U.S. Patent Law, and will also simultaneously save a majority of your foreign patent rights from extinction.

For more information on the provisions in a typical Confidential Non‐Disclosure Agreement, see Chapter 21 of this text.

Public use of an invention that can be proven to be an experimental use is not considered a prior public use when applying the requirement that an application must be filed within one year from public use. However, it is important to realize that in litigation against an adversary party, any disclosure which you may have considered experimental may ultimately be held by a court or a jury to be proven as a public use. In one instance I can recall, a conversation on a bus traveling between a hotel and a convention center during a trade show, where the inventor disclosed some of the ideas of his invention to someone on the bus, constituted a public disclosure. Therefore, it is important to note that if any public comments or disclosures are made about an invention, the inventor should be aware of what can and what cannot be done with regard to protecting patent rights in the United States and throughout the world. Appropriate non‐disclosure agreements should be used to cloak invention disclosures, at all times when possible, to prevent a disclosure from being “public.”