An Inventor’s Guidelines for Preserving Patent Rights

The patent laws of the US. and other countries ofer powerjkl protection for the intellectual property one creates - but they also come with unexpected pigalls that could lead to misfortune.

by Ross Dannenberg

INTELLECTUAL PROPERTY, or IP, fests a copyright, a logo manifests a trade- tion to the public, i.e., permanently lose patent generally refers to patents, copyrights, trade- mark, and an article of manufacture manifests rights, if certain actions are or are not taken marks, and trade secrets.’ IP, unlike real a patented invention. within specific time limits. property - land with a house, for example - is Intellectual property laws are the means On the other hand, copyrights, and to a through which the United States allows lesser extent trademarks, are easily formed intangible in form. One cannot hold it, and it creators and inventors to protect their ideas, and maintained. A copyright begins auto- cannot be seen it until it is manifested in some innovations, and hard work; i.e., patents can matically when the creator of the copyrighted specific article. For example, a book mani- be said to protect ideas, trademarks can be article fixes his or her creation in a tangible said to protect reputations and hard work, and medium, i.e., puts pen to paper, brush to can- Ross Dannenberg is an attorney with Banner copyrights can be said to protect artistic vas, stores a computer program to a disk, etc. & Witcog Ltd., and practices intellectual expression. Thus, even though the author of this article property law in Washington, D.C.; telephone Most engineers and software developers are has not registered a copyright for it, this arti- 202/824-3153,fax 202/824-3753, e-mail: at least familiar with the term “intellectual cle is automatically protected from copying rdannenberg @ bannerwitcofl corn. property,” but might not fully appreciate the and redistribution under U.S. copyright laws. “N advantages that inhere in its protection. Limited trademark rights also begin automati- Intellectual property laws give the owner of cally when a person or company begins using Legal Notice the IP, whether patent, copyright, or trade- Any opinions expressed herein are opinions of a trademark in commerce. the author and should not be attributed to mark, a legal monopoly to prevent others from This article will present an introduction to Banner & Witcofl Every scenario pertaining exploiting the protected creation. However, actions that inventors should and should not to intellectual property is necessarily fact spe- without intending to be careless, one might perform, and will present general guidelines cific. This article is intended only to provide inadvertently perform an action that might for inventors so that they do not inadvertently an introduction to and general information result in an accidental loss of rights to some or lose some or all of their patent rights. regarding intellectual property, and is not all of one’s intellectual property. It is also intended and does not include a complete dis- possible that unless certain steps are taken to Inadvertent Disclosures cussion of every exception and nuance of the protect intellectual property before a given The United States patent laws define three United States patent laws and court decisions deadline, an accidental loss of rights to some primary disclosure actions that might have regarding these issues. This article should or all of one’s intellectual property may occur. adverse consequences on an inventor’s patent not be relied upon as legal advice for any It is particularly easy to inadvertently com- rights.’ Each of the following three actions specific situation, but rather should alert the promise one’s patent rights. Although the discussed below triggers a 1-year window, or reader to recognize when to seek legal advice date on which an inventor conceives of a new “clock,” during which a patent application regarding a specific scenario. This article idea can be important, protection does not must be filed in order to preserve rights to the does not and is not intended to create an exist until a patent issues, and the inventor invention. If a patent application is not filed attorney-client relationship with anyone. might inadvertently dedicate his or her inven- within the 1-year window, the invention

24 Information Display 8/03 0362-0972/03/1908-024$1.00 + .OO 0 SID 2003 becomes public domain, and the inventor will in the art once he or she knows about ele- is demonstrated is subject to a non-disclosure lose US. patent rights, and most foreign ments A, B, and C, thereby rejecting the agreement (NDA), and at a minimum should patent rights, to an otherwise patentable Acme patent application. Thus, it is safest to file a patent application within 1 year of pub- invention. For example, if one of the follow- always file a patent application prior to mak- licly using or demonstrating the invention to ing three disclosure actions is performed on ing any offer for sale, or at the very least anyone not subject to an NDA. January 1, 2003, then a patent application for within 1 year of the first offer for sale of any Printed Publications. A printed publica- the invention must be filed by January I, embodiment of an invention. tion anywhere in the world can also start a 2004, in order to preserve rights to the inven- The Public-Use Bar. Any public use5 of 1-year clock measuring a time period within tion. an invention in the United States also starts a which a U.S. patent application must be filed.7 The On-Sale Bar. A I-year clock is started 1-year clock. A public use can include any A printed publication, obviously, must be when an invention is placed on sale, also use of the invention, even if secret, by a per- printed and be a publication, and it must also referred to as an offer for sale, in the United son other than the inventor who is under no contain a sufficient description of the inven- States. After 1 year from an on-sale event, an obligation of secrecy to the inventor. A pub- tion; i.e., the description must be adequate applicant is permanently barred from claiming lic use by the inventor himself or herself will such that it enables a person of ordinary skill the invention in a U.S. patent application. An also constitute a public use. Only a private in the art to make andor use the invention. actual sale is not required. Courts have use by the inventor himself or herself is not a In order for a printed publication to consti- defined this to mean that the invention, more public use as defined by the patent laws6 tute a publication, it must be circulated and than 1 year prior to the date of the patent Any public demonstration - at a trade accessible to the public to some extent. application, must have been the subject of a show, for example - or any public use by Printed publications include printed patents, commercial offer for sale, and must have been someone other than the inventor, not subject periodicals, journals, books, newspapers, “ready for patenting” at the time of the com- to a non-disclosure agreement (NDA) or other magazines, and the like. Printed publications mercial offer for sale. obligation of secrecy, is a public use. A pub- can also include whjte papers, Web sites, An invention is ready for patenting when lic use can also include a secret public use. In trade catalogs, conference papers, and other there has been actual reduction to practice of fact, very little use and very little publicity are printed papers that are distributed or available the invention, i.e., a working prototype has required to constitute a public use. A public to the public to a lesser extent. If a work is been made, or when the inventor has prepared use only requires that the invention be used in directed towards those of ordinary skill in the drawings or other descriptions of the inven- its natural and intended way, even if hidden. relevant art, very little circulation and very lit- tion that are sufficiently specific to enable a This includes, for example, a secret use in a tle permanency are required in order for the person of ordinary skill in the art3 to practice factory not open to the public, where the work to constitute a printed publication. the invention. The invention placed on sale4 invention is used to produce publicly available For example, if a conference paper describ- becomes what is referred to as “prior art” that commercial goods. For example, if Acme, ing the invention is distributed at a confer- can be used by the United States Patent and Inc., demonstrates a computer at a trade show ence, and the conference is attended by those Trademark Office (USPTO) against the patent and the computer uses the invention - a com- of ordinary skill in the art of the general sub- application. puter chip in the computer that increases pro- ject matter of the invention, then that confer- For example, if Acme, Inc., places an cessing speed, for example - then the demon- ence paper might be considered a printed pub- invention having elements A, B, and C on sale stration is a public use regardless of what is lication according to U.S. patent laws, and can on January 15,2003, but does not file a patent demonstrated on the computer (arguably even be used as prior art against a patent applica- application for the invention having elements if the demonstration is of an e-mail applica- tion filed more than 1 year after the date of the A, B, and C until January 16,2004, then tion or other application that does not use the conference paper. Similarly, a single copy of Acme, Inc., is barred from obtaining a patent benefits of the invention) and regardless of a doctoral thesis located in a library of a on the invention having elements A, B, and C. whether the audience actually sees or knows remote college or university in a faraway However, if Acme, Inc., places an invention about the chip itself. country can constitute a printed publication as having elements A, B, and C on sale on Even though public uses of inventions are long as the doctoral thesis is cataloged by the January 15,2003, makes subsequent improve- sometimes difficult to prove and easy to con- library and is available to the public. ments to the invention, and files a patent ceal, registered patent attorneys and patent Patent attorneys, patent agents, inventors, application on January 16,2004, for an inven- agents are bound by ethical obligations to and anyone else substantively involved in the tion having elements A, B, C, and D, the prior disclose any such relevant activities known patent-application process are under a duty to offer for sale of the invention having elements to them, or anyone else involved in a patent disclose prior art to the patent office, which A, B, and C will not automatically bar Acme, application, to the USPTO. This duty of dis- includes any relevant printed publications. Inc., from obtaining a patent on the invention closure continues until the application issues Thus, the safest course of action is to prepare having elements A, B, C, and D. It is worth as a patent. Thus, whenever possible, an and file a patent application as soon as possi- noting, however, that the sale of the invention inventor should file a patent application ble, and in any event before the inventor (or having elements A, B, and C can still be used before publicly using the invention as dis- an entity related to the inventor) produces any by the USPTO as a basis for arguing that A, cussed above. Otherwise, the inventor should printed publication regarding the invention. B, C, and D is obvious to one of ordinary skill confirm that everyone to whom the invention At a minimum, a patent application should be

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filed within 1 year of the date of the printed less of whether the other person was the first of formal requirements and a lower filing fee. publication in order to preserve patent rights. to reduce the invention to practice, provided This means that a provisional patent applica- that the first inventor was diligent in working tion can be filed on very short notice; how- Inadvertent Oversights towards his or her subsequent reduction to ever, it is subject to the same legal require- When an inventor or company receives a practice.* ments as a normal, i.e., non-provisional, U.S. patent, it is natural to want to try to exploit the Lawsuits can turn on whether an inventor patent application. Therefore, provisional patent by forcing infringers to pay the patent can prove the dates of conception and reduc- applications should only be relied upon if owner for a license to use the patent. In the tion to practice. Accurate records of these there is not enough time to prepare a non- event that enforcement of the patent results in events are often paramount in patent litiga- provisional patent application. For example, litigation, which occurs more frequently when tion. An inventor can prove reduction to prac- a provisional patent application is useful the invention protected by the patent is com- tice in at least two ways. The first is the con- when an inventor finds out that a publication mercially successful, various dates and facts struction of a working model or prototype. describing his or her invention will be pub- pertaining to the invention become extremely When a working model of the invention is lished the next day. The inventor can pre- important, even to the extent that a case can created, the inventor should document such serve patent rights by filing the publication as be won or lost based on the availability of the creation by, for example, making an entry in a provisional patent application by the next following information. his or her engineer’s notebook, printing any day. The inventor’s subsequent publication Conception. Most countries’ patent laws computer source code, and signing and dating cannot then be used as prior art or be deemed provide patent rights to the first person who the printout along with the signature of a barring public disclosure because it was files a patent application for an invention. another unrelated and uninterested individual. published on or after the filing date of the pro- These countries are referred to as first-to-file Reduction to practice can also be proven by visional patent application. countries. The United States patent laws, the filing of a patent application, referred to as There are many nuances to determining the however, provide patent rights to the first per- constructive reduction to practice. When rely- propriety of filing a provisional patent appli- son who actually invents a specific invention. ing on constructive reduction to practice, the cation, and this article merely serves to edu- The United States is thus referred to as a first- date on which the patent application is filed is cate the reader as to its existence. It is to-invent country. Obviously, a key date on the date of reduction to practice for purposes strongly recommended that an inventor seek which patent rights can thus hinge is the date of determining invention priority against the advice of a registered patent attorney prior on which an inventor originally conceived of another inventor claiming rights to the same to filing a provisional patent application. his or her invention, regardless of whether the invention. invention was actually implemented or work- Evidence of conception and reduction to Foreign Patent Rights ing at that time. practice should be gathered and maintained Most foreign countries have an absolute- Because of the potential importance of the when the patent application is prepared. novelty requirement in order to obtain a date of conception, every inventor should Memories fade and documents get lost, so it is patent. This means that, unlike the situation keep accurate records of the date on which an often easier to find evidence of conception in the United States, any public disclosure can invention is conceived. An example of evi- and reduction to practice when the patent bar a patent. If a patent application is not dence of conception might be a developer’s or application is prepared, rather than wait until filed in the foreign country prior to the public engineer’s notebook describing the inventive years later for litigation to ensue. disclosure, then patent rights may be lost in idea, signed and dated by a second individual, Enabling Disclosure. An enabling disclo- that foreign country. preferably someone who has no financial sure refers to drawings or other descriptions The United States is a party to an intema- interest in the invention, and also preferably of the invention that are sufficiently specific tional treaty referred to as the Patent Coopera- an individual who did not take part in the con- to enable a person of ordinary skill in the art tion Treaty (PCT), which allows the filing of a ception of the invention. Other types of evi- to practice the invention. Although the special patent application, referred to as a dence might include internal corporate e-mails creation of an enabling disclosure in and of PCT application, to preserve patent rights in in which an inventor describes the idea to itself does not trigger any clocks or affect multiple countries simultaneously, without another employee, or a backup tape from a patent rights, an inventor should be aware requiring that a separate application be filed network server on the date that the inventor that, when the invention is completed to such in each country in which protection is desired. first created a file or document describing the a degree that he or she can make or prepare an This special application, however, will need to invention. enabling disclosure, it is prudent to proceed as be “perfected“ in each country in which pro- Reduction to Practice (RTP). Just as soon as possible thereafter to file a patent tection is ultimately desired by subsequently important as the date of conception is the date application for the invention. filing the special application in each individ- of reduction to practice, ie., the date on which ual country within a prescribed time limit, a working model or prototype was completed. Provisional Patent Applications currently 20-31 months, depending on the When two persons both argue that they were The U.S. patent laws provide for a simplified facts of the individual case and the country in the first to invent a specific invention, the patent-application procedure referred to as a which protection is desired. As long as the inventor who was the first to conceive of the provisional patent application. A provisional PCT application is filed within 1 year of the invention has rights to the invention, regard- patent application is useful because of its lack filing date of the patent application in the

26 Information Display 8/03 United States, the PC1‘ application will be ment the date or the rirst orrer ror sale ana rile date of the application for patent in the United considered to have been filed on the same date a patent application within 1 year of that date. States. as the United States patent application for pur- File a patent application prior to disclos- 3A person of ordinary skill in the art is a myth- poses of determining whether the PCT appli- ing the invention to unrestricted third parties, ical person created by the courts, and gener- cation is barred by a public disclosure. i.e., anyone outside one’s company or not ally refers to a person with a degree of skill Inventors should be aware that any foreign under an NDA. At a minimum, document the which persons engaged in that particular art or PCT patent application must be filed within date of the first such disclosure and file a usually employ; not that which belongs to a 1 year of filing the U.S. patent application. patent application within 1 year of that date. few persons only, of extraordinary endow- Likewise, if the inventor first filed a patent File a patent application prior to distribut- ments and capabilities. application in a foreign country and is subse- ing any printed publication describing the 40ffering to sell or license the patent or patent quently seeking protection in the United invention. At a minimum, document the date application does not constitute a sale as States, then the U.S. patent application must of publication of the document and file a defined in the patent laws. That is, the sale be filed within 1 year of the foreign patent patent application within 1 year of that date. must be of an embodiment of the claimed application in order to claim the benefit of the Require third parties to sign an NDA invention in order to apply as prior art that earlier filing date of the foreign patent appli- before disclosing or demonstrating the inven- can be used against the patent application. A cation. In addition, if the foreign patent appli- tion to them, and before distributing any docu- contrary result might make it difficult for cation matures into an issued patent, and the ments describing the invention to them. entrepreneurs to raise necessary capital to inventor waited more than 1 year to file a Any public disclosure can destroy foreign complete development of an invention. patent application in the United States, the patent rights. 5There is a narrow experimental-use excep- foreign patent can be used as prior art by the If seeking foreign patent protection in tion to the public-use bar. If a public use was USPTO to reject the inventor’s U.S. patent addition to U.S. patent protection, file a for- necessary in order to test the invention or con- application. eign or PCT application within 1 year of the firm that it works for its intended purpose, If the inventor waits more than 1 year in filing date of the U.S. patent application. then the public-use bar might not apply. The either scenario - U.S. patent first or foreign As an emergency precaution, an inventor public use must be incidental to experimenta- patem first - the inventor loses the privilege can file a provisional patent application on tion in order for the experimental-use excep- of using the earlier filed application’s filing short notice, including the same material that tion to apply. The inventor should be aware date for the subsequently filed application. has been or will be publicly disclosed. that actual reduction to practice cannot occur This means that any applicable intervening (Remember, however, that filing a provisional prior to a claim of experimental use. prior art between the filings of the two appli- application triggers the 1-year limit for filing 61t should be noted that if the public use is cations can be used against the inventor by the a non-provisional U.S. patent application and performed by the inventor for purposes of USPTO or foreign patent office to reject the any foreign patent applications.) gaining a commercial advantage, then the on- patent application. An inventor can license an invention sale bar might also apply, depending on the prior to applying for a patent, for example, to facts of the specific situation. The Best Defense raise money from capital investors, but he or 71t should be noted that, pursuant to another When a patent owner sues another party for she should have the potential investors sign an section of the patent laws, if the printed publi- patent infringement, the patent owner will NDA, as noted above, prior to disclosing the cation predates the inventor’s earliest date of most likely be required to prove the dates of invention to them). conception of his invention (i.e.,someone else conception and reduction to practice at some invented it first), then there is no grace period, point during the litigation. The patent owner Notes and the later inventor is barred from obtaining may also be required to demonstrate the date ‘For purposes of this article, it is assumed that a patent. of first sale or offer for sale, the date on which the reader has a basic understanding of these ‘The U.S. patent laws state “[iln determining the first public disclosure was made, and the various forms of intellectual property. For a priority of invention .. . there shall be consid- date of publication of any printed publication general introduction to patents, copyrights, ered not only the respective dates of concep- describing the invention. and trademarks, see “Intellectual Property: A tion and reduction to practice of the invention, The best defense is a good offense. Accu- Primer” by Ross Dannenberg and Jordan but also the reasonable diligence of one who rate and complete documentation of each of Bodner (copies available upon request from was first to conceive and last to reduce to these dates is vital to proving the validity and Ross Dannenberg at rdannenbergabannerwit- practice, from a time prior to conception by enforceability of a patent. Thus, every inven- coff. com). the other.” 35 U.S.C. 0 102(g). W tor should remember the following tips: *Statutory patent laws are located in Chapter Document dates of conception and reduc- 35 of the United States Code. Section 102 (b) tion to practice, and maintain evidence of of Chapter 35 states that a person shall be these dates in the patent-application file. entitled to a patent unless, among other Seek patent protection as soon as possible requirements, the invention was patented or after creating an enabling disclosure. described in a printed publication in this or a File a patent application prior to offering foreign country or in public use or on sale in an invention for sale. At a minimum, docu- this country, more than one year prior to the

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