Many businesspeople are familiar with deadlines for the filing of patent applications in the United States prior to the Patent Reform Act. Previously United States patent law provided a one year grace period for filing the application after the following events;
1. sale or offer for sale of the invention by the inventor or unrelated third parties; or
2. public use or display of the invention by the inventor or unrelated third parties; or
3. description of the invention in a printed or electronic publication by the inventor or unrelated third parties; or
4. filing for protection of the same invention in other countries.
It has long been the case in many other countries that any of these events immediately prohibit filing patent applications. In contrast, the former U.S. one year grace period allowed both unrelated third parties and invention owners to write papers about the invention, display it at a trade fair or sell it, and yet preserve the right to file an application within a year of the earliest activity date. Under the Patent Reform Act, this one year grace period no longer exists if an unrelated third party engages in these activities or otherwise publicly exposes the invention. Consequently, if an unrelated third party discloses the invention publicly in any manner, this activity immediately prohibits filing an application for that invention. Under certain circumstances this prohibition includes descriptions of the invention in patents and patent publications.
The Patent Reform Act preserves the one year grace period under certain circumstances whenever the inventor or a related party discloses the invention within a year prior to filing. Under one such circumstance, the inventor or related party must disclose the invention prior to disclosure by unrelated third parties. Consequently, in addition to pre-empting the earlier filing of fraudulent (and legitimate) patent applications, inventors must prevent prior invention disclosure by unrelated third persons. One can easily understand that together these two obstacles form a formidable barrier to patent ownership very early in the patenting process. Furthermore, the earlier filing of a fraudulent application is difficult to remedy even if a bona fide application is properly filed under the new grace period rules. In sum, the bona fide inventor must be wary of those who either(i) dissipate the one year grace period or (ii) fraudulently file if they obtain or observe a prototype or detailed technical description.
So what can the invention owner do to overcome this less forgiving new law? Now it is more risky to sales test the invention, because (1) a third party distributor, vendor or purchaser familiar with the invention could file an application first; or (2) unauthorized sales by an unrelated third party immediately prevents filing. The best approach requires the filing of the application prior to sales, description in a printed publication or other public exposure. Unfortunately, this strategy requires additional fees; under prior law the invention owner could defer filing the application to determine whether the invention was commercially successful.
It is also imperative that the invention owner invest in a U.S. patent application in absolute secrecy. Thereafter, if the invention does not meet commercial expectations the applicant can abandon the application. As mentioned in my previous article, the application must be a technically sufficient U.S. utility application (or design patent depending upon the circumstances). Incomplete provisional applications will merely lure the unsuspecting into a false sense of security.
© 2011 Adrienne B. Naumann
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