Business clients of my office are diverse with respect to awareness of non-extendable deadlines for United States utility patent applications. Many are unaware of deadlines while others are aware of some generically but not of others. My article miniseries on this topic will review these deadlines, how to identify them, and how to strategically prevent them from arising under certain circumstances.
First comes general background information for understanding requirements of United States patent deadlines. All countries except the United States are designated as first to file jurisdictions. With first to file, despite who invents earliest the first person to file the application for an invention will obtain and own the patent. Unfortunately, this makes things much harder on smaller businesses. Through the years there has been proposed legislation in Congress to convert the United States system to a first to file system. The primary reason uniformly provided is that such a change would harmonize the U.S. patent system with those of other countries.
Second, under U.S. patent law certain events related to an invention may prevent patentability if the potential applicant is not first to invent. Consider this particular genre of events: If a device is used by others within the United States, and prior to later independent invention, then that use will bar a United States patent for the later inventor of the device. This prior use can be intangible, but use in other countries will not affect patentability in the United States. Furthermore, use by others of the invention must be accomplished by more than one person in the United States.
As another example, imagine three farmers with the same modified seeding machine. They each initially use this modified seeding machine in Oklahoma, Kansas and Kentucky, U.S.A. in April 2005. Meanwhile, another fourth farmer independently invents the machine in Texas, U.S.A. in January 2006. The result? The machine is not patentable by the Texas inventor, because he did not independently invent until January 2006. If we change the facts a bit, then we obtain a different result: If the three farmers did not use the machine until May 2006, then the machine is patentable by Texas farmer, because the first three farmers’ use did not occur until after the January 2006 invention (assuming there are no other legal prohibitions that prevent protection in the United States.).
As a second example, imagine that four individual persons use the identical computer software program in Illinois in July 2003. In August 2003 a completely different person in Indiana independently invents the same program. The Indiana inventor cannot file a U.S. utility patent application because he did not invent the program until after its use by four other persons in the United States. However, if only one person uses the identical program in July 2003, then the Indiana inventor may successfully file because (i) only one person used it prior to the second independent invention; and (ii) the patent statute requires more than one such person (i.e., ‘others’). As another related example with a twist: If three persons use the program in England in July 2003, and all other facts remain the same (i.e., later independent invention in August 2003), then the Indiana inventor may obtain protection because use by others must occur in the United States.
Incidentally, if the patent deadline in the United States has expired, consider registration of software under the United States copyright statute. There is no filing deadline and the requirement for registration is independent authorship with sufficient creativity and originality.
© 2011 Adrienne B. Naumann
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