Dude, where’s my filing date? part 2

This article is the second in my series on events that trigger non-extendable U.S. utility non-provisional patent filing deadlines. After these deadlines expire, there is no manner in which to revive potential patent protection. Consequently, precious financial investment from third parties, as well as market research therefore, are lost forever. Because of this harsh reality, it goes without saying that every business person must recognize and understand these events, as well as how to prevent some from occurring under certain circumstances.

We continue our discussion of statutory events that precede invention and prohibit patent protection in the United States. Another intangible event that may prevent patentability prior to filing an application is public knowledge of the invention. As with use by others, public knowledge must occur in the United States, requires that no secrecy is intended, and a significant portion of the relevant public must access to the knowledge. Written or electronic documents are not necessary to trigger the deadline with respect to public knowledge.

As an example of public knowledge, consider a trade fair wherein an electrical device is openly displayed to all persons who bought a ticket thereto in Tulsa, Oklahoma. Although the new components are not immediately apparent, anyone can open the device and view its interior contents. The trade fair takes place in October 2006. Subsequently, in December 2006 an electrical engineer in Florida independently invents the same interior components. Result? The Florida electrical engineer cannot obtain patent protection because he invented the new components after the public viewed them earlier (or could have viewed them in a non-secret manner) in October 2006. This is another example in which invention must precede the triggering event in order to be patentable in the United States.

Printed publications can also prevent patentability in the United States. Under the modern view whether a document (that sufficiently describes the invention) is published is most important. The reason is that the term ‘printed’ is defined very broadly and for example, would include internet communications. The appropriate publication will prohibit patentability of this invention if publication occurs prior to independent development thereof. However, unlike use by others and public knowledge, prohibitive printed publication can arise in anywhere in the world. Consequently, if an invention is described in sufficient technical detail in an electronic or paper publication anywhere in the world before the date of invention, then that invention is not eligible for a United States patent.

An example of the printed publication dynamic is as follows. In March 2005, a graduate student in Russia develops a new pharmaceutical drug that increases the five-year survival rate for breast cancer patients. He describes how to produce and apply this pharmaceutical in his doctoral thesis. Thereafter, five identical copies of his doctoral thesis are placed in a public library in Russia. His thesis is thereafter catalogued (i) on-line and (ii) in a paper system on the physical library premises. In January 2006 a second graduate student in the United States independently invents the same pharmaceutical drug in the United States. Result? The second United States graduate student cannot obtain a patent therefore in the United States, because the original doctoral thesis was published prior to his January 2006 invention. However, if the second graduate student had invented the pharmaceutical in January 2005, then he could proceed with United States patent protection.

© 2011 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com

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