Posts Tagged “public disclosure”

Like many pieces of major legislation, the September 16th passage of the “America Invents Act” had some people running around with their hair on fire… whereas the reality is that many of its most ballyhooed provisions don’t come into play for a year or more. In the next couple of posts I’ll review what you need to think about now…and eventually review what you need to think about later.

The provisions of the act can be broken down into three groups; those coming into effect on or before November 15, 2011, those coming into effect on September 16, 2012, and those coming into effect on March 16, 2013. [For the nit-pickers, yes, some of the later provisions will apply to pending or even issued patents, so there is some earlier impact than their effective dates]. Anyway, let’s look at the most significant provisions that are or will be in effect by a month from now.

Provisions that affect everyone (financial):

  1. There is now a 15% surcharge on Patent Office fees.
  2. Starting 11/15 there is a $400 “electronic filing incentive” (actually a paper filing disincentive surcharge)
  3. There is now a “Micro-Entity” filing category that qualifies for a 75% discount off filing fees.

Item 1. is pretty clear and is already incorporated into the fee schedule from the PTO.
Item 2. is also clear – so if you are almost ready to file a (non-provisional) application on paper, do it before 11/15 to save yourself $400 ($200 small entity).
Item 3., when you read who qualifies as a micro-entity, is really directed at the independent inventor. Here are the qualifications:

  • Qualifies as a small entity;
  • Has not been named as an inventor on more than 4 previously filed patent applications;
  • Did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times the median household income [approximately $50,200]; and
  • Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.

Note that being named as an inventor on a patent assigned to a prior employer doesn’t count against you.

Prior User Rights (trade secrets):

The only other immediately effective provision of importance to most of my clients is the expansion of “prior user rights”. Prior user rights means that you can be protected from an infringement suit IF you can prove that you were using the invention commercially in secret for at least a year before the patent holder disclosed the invention publicly.

Under prior law you had a Catch-22 situation; you could maintain your trade secret for years and suddenly risk being sued for infringement should someone else patent your invention, or you could file a patent application, which made your secret public, and risk never being able to enforce your patent (since the actual invention in a trade secret is inherently not visible to the outside world).

Under the new law you can maintain your secrets and still have an infringement defense. It would appear that you will be okay if you maintain an evidentiary chain showing that you were using the invention in commerce. For example, keep process control records that show use of the invention to make a product that you sold. Even stronger as evidence – involve a third party who has no financial interest in the invention. For example, a trusted customer to whom, under NDA, you have revealed the processes you used to fill his orders.


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For the fourth consecutive Congress our legislators will attempt to pass reforms to our 60 year old patent laws. My sense is that this year it might actually pass, driven by Mom and apple pie…uuh I mean the (“no-cost”) job growth and competitiveness arguments. Of course, what’s good for one group of inventors may be problematic for another, so we’ll have to wait to see if the bill gets recycled once again or finally enacted.

A draft of the Patent Reform Act of 2011 is available online ( Based on a summary at, here are a few of my thoughts on the first of about a dozen changes.

The Act transitions the U.S. from the first-to-conceive-and-diligently-reduce-to-practice system to a first-inventor-to-file (FTF) system – I think this change is a benefit to everyone (except procrastinators), particularly with our (US) provisional application process which lets an inventor get an application on file quickly.

Everybody benefits by eliminating the cost and record keeping requirements needed to support an interference proceeding (which is how the “first-to-invent” determination was made, if needed). These costs and requirements were particularly burdensome for the small inventor since the primary evidence – the invention notebook – really needs a system behind it to prove its validity. The small or solo inventor is hard pressed to find people to “read and understand” his work on a regular basis or to have an independent system to provide incontrovertible evidence to support his witnesses’ testimony.

Furthermore, we know the small inventor may have to set his invention aside (to earn a living), bringing his “diligence” in reducing his invention to practice into question. With FTF the whole diligence question goes away. And I can make a fair argument that the first person to reduce a conceived invention to practice is the one who deserves the patent (instead of the current US rule that the conception part give you the priority). If invention is 1% inspiration and 99% perspiration, then the patent should go to the person best at doing the 99%!

In a related change, the Act seems (to my eye) to modify the US-only one year “grace period” for public disclosures such that only disclosures by the inventors are given the grace period. The current rule allows an inventor to file for a patent within one year of a public disclosure of his or her invention – no matter who makes the disclosure. If the disclosure comes from someone other than the inventor, the inventor can pull out his evidence that he was first to invent and proceed with his patent application. In the rest of the world, where there is no consideration of who invented first and thus no mechanism for examining the evidence, there is no grace period and any public disclosure is considered prior art to your application. The rule prevents a non-inventor from rushing to the patent office with an application based on the public disclosure. Clearly, in a FTF system, some rule is needed to block fast copy-cats from getting a patent on some other inventor’s work.

This new rule is a compromise between the current one year grace period for all disclosures here and the no grace period in virtually the rest of the world. I think this is a good compromise that the rest of the world could adopt. After all, if the public disclosure comes from the applicant it does not cast doubt that he was an inventor. Furthermore, one of the purposes of the patent system is to encourage inventors to share the details of their invention with society. Allowing public disclosure prior to filing furthers that goal.

I’ll comment on some of the other aspects of the (re)proposed Act in later posts.

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We’ve all hear the expression that a lawyer who acts as his own counsel has a fool for a client; well apparently that applies to doctors as well. Dr. Richard Lister, a psychologist, “invented” a new method of playing golf and filed for a copyright on a manuscript describing the method (essentially allowing golfers to use a tee for all shots from the fairways or rough) on July 4, 1994 under the misapprehension that the copyrighted document would protect his invention. That was foolish mistake number 1. Since he used an attorney to file for the copyright I’m assuming he did not explain clearly why he wanted the copyright.

More than 2 years later (8/96), after getting clued in that a patent, not a copyright, is needed to protect an invention, he filed a patent application on this method of playing golf. This was foolish mistake number 2, since it was unlikely that the patent would ever issue and perhaps even more importantly it was unlikely that any organization would start running Tee Golf Tournaments, leaving him to enforce his patent by chasing individual golf foursomes around the course to see if they use tees on the fairways.

Unsurprisingly, Dr. Lister has been unsuccessful these past 13 years in getting a patent issued; nevertheless he continues to spend money pursuing his dream. By my count, foolish mistake number 3. There have been several rounds of rejections and two appeals to the Board of Patent Appeals. He has just won a Pyrrhic victory in the Court of Appeals for the Federal Circuit (CAFC) wherein the Court vacated the PTO’s latest (2003) rejection, issued on January 31, 2003, in which “the examiner rejected the only independent as anticipated by his own, copyrighted manuscript. In the examiner’s view, the manuscript was sufficiently publicly accessible to be a printed publication because an interested researcher would have been able to find it by searching the Copyright Office’s catalog by title.” Since the CAFC ruled in his favor on very narrow grounds, Dr Lister will now probably continue his windmill-tilting pursuit of his patent.

The decision teaches us some important lessons about prior publication of our inventions and the use of the provisional application process to avoid the pitfall Dr. Lister has apparently just avoided. The key logic behind the “prior publication” bar to getting a patent is “… that once an invention is in the public domain, it is no longer patentable by anyone.”, even the inventor. However, in order to qualify as a printed publication a reference “must have been sufficiently accessible to the public interested in the art.” A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”

Since “sufficiently”, “reasonable” and “interested” are subjective terms, each case must be considered individually and in context. In this case, Dr Lister’s manuscript was available to read in Washington but the Copyright office’s catalog is only searchable by author and firstfirst word of the title, so the CAFC ruled that one could not find this method of playing golf by searching on “advanced”, the first word of the manuscript’s title.

So what are some other examples?

  • A thesis in a library, not yet cataloged or shelved is NOT accessible.
  • A thesis in a library cataloged by student’s name and shelved is NOT accessible in a meaningful way.
  • A document available at a single, perhaps distant location (viz., the copyright office)  IS accessible.
  • A document (e.g., in a collection) available for perusal but not copying is available if the subject is easily understood.
  • A document in a private, controlled collection is NOT accessible.
  • A poster presentation at a conference is a prior publication if the conference has “interested” persons attending and the content of the poster is easily understood and remembered by viewers.
  • A document is a prior publication even if it can be proven that no one actually looked at it.
  • A purely oral presentation is almost certainly NOT a prior publication.
  • Slides presented along with an oral presentation are a toss up (particularly with the ready availability of digital cameras).

The bottom line, of course, is that any material you are going to let out of your direct control may, as the Miranda warning goes, be used against you in a (patent) court. To avoid any question of prior publication, I advise people to file their documents or slides as a provisional application, understanding of course, that the ONLY “protection” this gives you is protection against a rejection based on prior public disclosure of whatever is in the document. Also, this meager protection is lost unless a regular application is filed within the year.

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