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  Intellectual Property Issues for High Tech Companies
Vol 3 Issue 9 October 2003

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Did you know...

Is Your Invention Complete?

Tip of the Month

IP Links of Interest

On-Line Patent Glossary


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Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Vaporware, smoke and mirrors, pre-release product announcement, or engineering proposal. If you often hear these terms inside your company, there's a good chance your sales cycle and your product development cycle overlap and your intellectual property rights might be in jeopardy.

Knowing when to file a patent application is critical to protecting your inventions properly, so read "Is You Invention Complete?" to learn more.

  • Did you know...
  TechRoadmap's Invention Mining (SM) services provide a periodic status review of the progress of your inventions. Early identification of potentially patentable concepts is the best way to avoid losing your patent rights when you make public disclosures or offers to sell.

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  • Is Your Invention Complete?

In an overlapping sales and development cycle environment, there are two opposing timing considerations. On the one hand, US patent rules say you must file your application within one year of making an offer to sell your invention. This rule pushes you to file as soon as you have a concept that your marketing staff wants to announce. On the other hand, since you cannot add anything of substance to your application after filing, you must have completed your invention before you file.

But when is your invention complete? One attorney I know says the inventive process "starts with conception and ends with reduction-to-practice". Thus, filing an application based on a concept, without knowing how to "enable" the concept in a real product, will likely cause you to lose your patent rights when the patent examiner rejects your application two or three years later.

The patent case of Space Systems/Loral (SSL) v. Lockheed Martin (LM) is a real world example of the inherent difficulty of selling and developing simultaneously. In the early 1980's, when Loral was under contract for a satellite attitude control system, one of their engineers conceived of a new control approach that saved fuel (and thereby increased the useful life of the satellite). Loral proposed an add-on to their contract to develop this new approach for the satellite. Thirteen months later Loral filed a patent application on the new control approach and was ultimately awarded a patent.

LM, apparently seeing value to the new approach, went to court to get SSL's patent invalidated based on the 13 month delay between the proposal (the offer to sell) and the patent application. Was LM right? Was the approach a complete invention, ready for patenting?

Apparently not. SSL argued successfully that although the inventor certainly had a complete concept at the time of the proposal he did not know then how to implement or embody his concept. Making the control approach work required months of additional work.

The Court explained that other than actually reducing an invention to practice, an invention is ready for patenting if "the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention", and it must be "clear that no aspect of the invention was developed after the critical date [viz. one year before the application]."

Companies pushing hard to get to market, trying hard to listen to their customers or customizing a product to meet a large customer's needs should pay close attention to the timing requirements discussed in this case. Don't count on the "we didn't yet have a working prototype" defense. Consult with your patent attorney and other patent knowledgeable professionals on a regular basis to discuss the progress of your inventions. These discussions become doubly critical if you've already offered one for sale, vaporware or not.

Read this article on line.

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  • Tip of the Month
Pay close attention to the progress of your inventions, with an eye to filing your patent application:
  • Keep records of your progress - Being able to prove, years later, that you needed additional time to reduce your invention to practice will be tough without documentation

  • Consult regularly with a patent-savvy professional - You are probably too close to the invention to make any objective evaluation of its status. Besides, if you have regular status reviews scheduled, decisions are less likely to fall in the cracks.

  • Use a provisional application - Multiple provisional applications can be consolidated into one utility application. Lock in priority dates as you finish parts of your invention.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  Industry's Best Glossary
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Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.


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