Ya can’t make this up: American Invents Act

In my last article I addressed one group of first to file provisions of the America Invents Act. For that group I identified the activities of inventors or third persons that immediately prohibit filing of a patent application in the Unites States. I also addressed exceptions to the immediate prohibition against filing an application that arise from several of these activities. In this article we look at another set of circumstances that prohibit filing of a patent application under the America Invents Act. These circumstances include the mere description of the invention in a (i) patent (ii) published U.S. patent application and (iii) publication of an international application.

First, even if a claimed invention (that is, the specific invention for which protection is the goal) is merely described in an earlier patent, then no other application can be filed for that same invention. This rule is different from one filing restriction of my previous article, that is, the circumstance in which the same invention is actually the SUBJECT of a patent and not merely disclosed in the patent’s text. For example, imagine that the patent explicitly and exclusively protects a new kind of chair, but that the patent text also incidentally describes a new kind of table. If a second person then files an application to protect, and not merely describe, a table that is identical or very similar to the table merely described in the patent, then this second person cannot file a patent application in the U.S. to protect this table.

However, on the sunnier side this prohibition only applies when the patent for the chair (i) designates another inventor and (ii) was effectively filed before the effective filing date of the second person’s application to protect the same table. The effective filing date is generally the date on which the application was submitted (i) directly with the patent office (ii) by U.S. mail (iii) electronically or (iv) by courier. An effective filing date can also arise whenever (i) an appropriate predecessor application was effectively filed (ii) prior to the filing date of the application that became a patent.

Secondly and with exceptions, patent applications filed in the United States are routinely published at uspto.gov approximately eighteen months after they are submitted to the U.S. patent office. Referring to the previous example, if the table was not intended to be protected by, but was merely described in, the published application, then by law a second application requesting protection specifically for that table cannot be filed. As with the above patent example, this restriction is only applicable if (i) another inventor is named on the published application for the chair and (ii) the published application (for the chair) was effectively filed before the effective filing date of the application that specifically protects the table. With exceptions, the publication of an international application designating the United States with the World Intellectual Property Organization is also considered a published patent application for this filing bar/restriction.

There is an exception to the above filing restrictions if the merely disclosed subject matter in the patent or published patent application was obtained from the inventors(s). There is also an exception if the merely disclosed subject matter (i) was publicly disclosed by the inventor(s) or someone who obtained the disclosed subject matter from the inventor(s) (ii) prior to the effective filing date of the published application or patent that merely contains, and does not purport to protect, the subject matter (such as the table in our example). Finally, there is a third exception if the merely disclosed subject matter and the invention to be protected, not later than the effect filing date of the patent or published application, were both (i) owned by the same person or (ii) were to be transferred to the same person.

©2013 Adrienne B. Naumann
Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.


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