Everyone knows the adage “the best defense is a good offense.” That adage can now be applied to the field of patent procurement. United States patent laws recently underwent a radical transformation from a first to invent system to a first to file system.
The new laws create an important exception that makes publication, which has always been used defensively to prevent others from obtaining a patent, an offensive tool that can be used by the inventor to secure a patent even when the inventor cannot get to the U.S. Patent and Trade Office (Patent Office) first.
The New Law in Action
Alice has an invention but she does not have the capital to get a patent application on file quickly. Not only that, she is not sure that she actually wants to go through the process of filing a patent application and needs more time to decide. Alice is worried that someone else may independently patent the same thing thereby preventing her from practicing her invention. She has heard that under the new U.S. patent laws, one must be the first to file an application with the Patent Office if one hopes to get a patent.
Alice thinks she is out of luck under the new laws but consults her patent attorney. She explains her situation, thinking that her attorney will confirm what she already knows. After hearing her story, her patent attorney tells her that there is an important exception under the new law that really makes the U.S. a first to file or publish country. Alice is confused and asks, “If I don’t file first, don’t I lose?” “Not necessarily so,” her attorney tells her, “you need to publish your invention to preserve your rights.”
Her attorney explains that under the new laws, while a person is generally entitled to a patent (assuming all requirements are met) unless there has been a public disclosure such as a publication anywhere in the world, an important exception exits for the inventor’s own activities. Namely, the inventor’s publication becomes prior art against everyone except herself so long as the inventor files an application within a year of that disclosure. Most other countries under a first to file system have an absolute novelty standard that does not provide for a grace period for inventor’s activities and, thus, a publication before filing will forfeit the ability to seek protection in those countries.
Alice is really confused now. She asks her attorney to put it in plain English so she can understand. Her attorney gives her this example.
Jane has independently invented the same thing Alice did, only she did it before Alice. Not only that, Jane has a lot of money and was able to file her application with the Patent Office first. Alice, on the other hand, took her attorney’s advice and quickly published her invention before Jane filed her application. Within a year of Alice’s publication, Alice was able to file her patent application. Under this scenario, even though Jane invented first and filed first, because Alice published first, her publication became prior art against Jane’s application and thus Alice is entitled to a patent, not Jane. Alice was able to use her publication offensively and secure her own patent even though Jane invented and filed first because Jane is no longer able to swear behind Alice’s disclosure as the U.S. is no longer a first to invent country.
Therefore if one is a concerned that one will not win the race to the Patent Office and one is only concerned with domestic protection, one may consider publishing first followed by a subsequent filing with the Patent Office within a year of the publication.