Posts Tagged “Prior art”

I doubt that it’s news to many people that the US is changing from a so-called first-to-invent priority system for awarding patents to a first-(inventor)-to-file system. And that pending change (March of 2013) has a lot of people running around as if the sky were falling. It’s not. You aren’t really in a race to the patent office to beat another inventor.

For most inventors this switch, per se, will have no effect on their patent applications. The chances that you and another inventor more or less simultaneously invent and file the same invention is small. After all, there are currently just a handful of “interference” procedures to sort out who was the first to invent. And in those procedures, the first inventor to file usually comes out on top anyway.

That’s not to say the switch will not have an impact on you. The collateral damage from the switch to first to file is that the scope of problematic prior art is significantly increased. In the present system you can “swear behind” a piece of prior art by presenting evidence that your date of invention was earlier than the date of the prior art.

Such swearing behind only makes sense when the date of invention is important (as it is now). Essentially you are proving that you had fully conceived your invention before the piece of prior art was known to the public; even if it took a year of diligent work to reduce your invention to practice (during which time the prior art became public) you are still entitled to the patent.

Under first-to-file, the idea of using the date of conception to provide priority goes out the window… all first to file cares about is, not surprisingly, when you file. But even this change is not a totally new concept to wrap your head around. If you’ve even been interested in getting a patent outside the US you have seen this issue before. In virtually the rest of the world, “absolute novelty” reigns; if your invention has been disclosed to the public, you lose.

Admittedly, under the new US rules things are even more difficult since prior art can be invalidating for both novelty AND obviousness, but the basic principle of needing to file before someone else makes a public disclosure is the same.

So, after March 16, 2013, there’s no race to beat another inventor to the patent office but there is an imperative to file before some (academic sort?) publishes something that will destroy your right (and everybody else’s) to get a patent. But right now, before first to file, you should make a concerted effort to file (at least a provisional application) on any potentially patentable invention you’ve been working on.

If you don’t, the piece of prior art you can swear behind on March 15th will be invalidating on March 16th.

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The second half of the perennial TV news story about people lining up for hours to buy some limited resource is the next day followup story about how the tickets can only be found on StubHub. How do those resellers get their supply of tickets. One way is to hire people to wait in line on their behalf. On an individual basis, you too could get front-of-the-line access to a show without spending two nights in the rain and cold. How? By buying someone’s place in line. Everybody has their price, at least for something like seeing a concert. Maybe not for a dollar, maybe not for $20, but surely for some price you could buy one of the first 20 spots in any line.

As it turns out, a small change of prior art definition of the new patent law may, repeat may, allow you to buy yourself an earlier priority date with respect to someone’s prior patent application than you would normally be entitled to! Or, from the other perspective, you may be able to monetize your invention even before your patent application is examined by selling your priority date.

How does this work? Apparently, as part of the new definition of what constitutes prior art for obviousness, there is an exclusion for prior work performed by other inventors to whom you are joined by a joint research agreement. Thus, if university professor A files an application on day 1 and company B signs a joint research agreement with professor A on day 100, company B can then “invent” a small improvement to professor A’s invention – one that would probably be obvious given professor A’s work – but have professor A’s work treated as their own for obviousness prior art purposes.

To be clear, this is an observation that I was told about, not an accepted interpretation of the America Invents Act. No one knows if this will really work, since no one has tried it yet. And of course, just like buying a place in the ticket line, finding the right price (i.e., the value of the joint research agreement) for eliminating one or two pieces of prior art will be an interesting negotiation.

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You’re probably familiar with the old FRAM oil filter tag line – “you can pay me now or you can pay me [much more] later“. I say essentially the same thing to my clients when the topic of prior art searching comes up. Of course, as their Director of IP I usually am saying “We can invest in prior art searching now or pay an attorney a lot more later.”

If your invention is worth patenting, if it will add value to your company in a unique way, then by definition some competitor will want to use your invention, either by infringing (and hoping to invalidate your patent if you sue) or by asking for a re-examination to bring in new prior art that you didn’t find and/or the patent examiner didn’t consider. In either case you will spend a lot of money – orders of magnitude more money – explaining away prior art that you didn’t know existed than you would have spent finding it yourself before filing.

Karen Hazzah, in her All Things Pros blog writing about a re-examination case, makes the same point:

But non-patent literature is much more common in reexaminations, where the requester has reason to spend a lot of money on a literature search. That leaves a lot more room to argue about the “printed publication” requirement. And since an in-force patent is at stake, it’s not surprising that the patentee digs really deep with its arguments, bringing up facts like [the lack of] ISBN numbers and sales receipts.

In the particular re-examination, the “requester” (viz., competitor) found prior art in a college professor’s self-published, loose leaf, “textbook” that he had used in his teaching. He had distributed it to about 600 pupils over the years and mentioned it in publications. He sold copies to anyone who asked, based on seeing those publications.

The patentee grasped at straws, arguing that this prior art wasn’t a “printed publication” within the meaning of the law because of its informal nature and distribution channel . But nothing in the law says prior art has to be produced by a traditional book or magazine publisher or be bound in any particular fashion; nothing in the law says you have to be able to get it on Amazon.

The spirit of the law only requires that a document has been disseminated or otherwise made available – to the extent that someone interested and ordinarily skilled in the subject matter, can, with reasonable effort, “locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.” In other words, a document is prior art if an interested party can reasonably get their hands on it.

This “textbook” is an extreme case, to be sure. What are the chances that you could find a similar, privately produced “textbook” that described your invention, given the 4000 colleges in the United States and the tens or hundreds of thousands of professors who have taught there? But as this case shows, if someone wants to invalidate your patent, they will spend the money to find the prior art.

If at all possible, you should pay for a prior art search… or you can pay me later!

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An advertisement in a muscle magazine for a dietary supplement was all it took to invalidate Iovate’s licensed patent. Iovate is the licensee of U.S. Patent 6,100,287, which claims the use of nutritional supplements containing a ketoacid and an amino acid to enhance muscle performance or recovery from fatigue. When they sued a competitor, BSN, Inc., for infringement for selling a competing supplement the courts found that an ad for Weider’s VICTORYTM Professional Protein published in Flex magazine was an anticipating printed publication of the invention. That is, the ad disclosed every limitation of the claimed invention.

 I often tell clients that the value of a patent is only determined if someone cares enough to want to infringe it. And if someone does find it worthwhile to infringe, you can be sure they will invest in finding any invalidating prior art they can. That’s too late for you to find out your patent should never have been allowed; you should have done research up-front, before investing in a patent application. Like the old oil change ad said, “you can pay me now, or you can pay me later”.

Most people understand the importance of doing a patent search before investing heavily in the development of a new product. Some people understand the value of doing a patent search before investing in the patent application process. But too few people understand that reviewing the NON-PATENT prior art before investing in that patent application is also an important up-front investment to make before plunging into the patenting process.

In fact, in many situations it may be more important to look at the non-patent prior art. The patent examiner, bless his or her heart, will at least do some sort of search in the US Patent database. If you’ve filed under the Patent Cooperation Treaty, you’ll get a search of various international patents. But you’re pretty much on your own when it comes to bringing forth the non-patent prior art. And that makes sense – after all, you are the expert in the field of your invention, aren’t you?

Clients’ first reaction to this advice is almost uniformly: “But then I might not get my patent!” True, true. But if you do get a patent and, like Iovate, a competitor infringes, don’t you think he will find that prior art and turn your patent into an expensive piece of wallpaper?

How confident are you that your patents will stand up to a court challenge?


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