Patent Law Changes: To Disclose Or Not Disclose?

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Under the AIA, publicly disclosing your invention can be hazardous.

Under the AIA, publicly disclosing your invention can be hazardous.

Sorry for the hiatus in posting – with the transition to first-inventor-to-file, I, along with many other patent attorneys I know, had more than a few applications to file before March 16th.

Now that we went over that hurdle though, it’s a good time to reflect on the changes that all new applications are subject to.  Dennis Crouch, over at Patently-O (one of my favorite patent blogs), has summarized many of the relevant changes here.

A real concern for inventors and companies alike is the uncertainty surrounding the “disclosure grace period” under the new laws.  Under the old law, an inventor could publically use, disclose, or sell his invention and still obtain a U.S. patent if she applied for the patent within a year of the first public activity.  Under the new law, it is not clear that these activities will offer the same opportunity to file at a later date, and as such, an inventor may sacrifice her ability to obtain a U.S. patent.  I’ve found that it’s easiest to understand some of the effects of publicly disclosing an invention or not by going through the following scenarios.

Scenario A:

  • You invent a new widget, but do not file a patent or otherwise disclose the widget to the public.
  • Another person invents the same widget, without learning about it from you.
  • You file a patent application to the widget.
  • The other person files a patent application to the widget.

Result: You get the patent.

Scenario B:

  • You invent a new widget, but do not file a patent or otherwise disclose the widget to the public.
  • Another person invents the same widget, without learning about it from you.
  • The other person files a patent application to the widget.
  • You file an application to the widget.

Result: The other person gets the patent.

Scenario C:

  • You invent a new widget.
  • Another person invents the same widget, without learning about it from you.
  • You publicly disclose your widget by, for example, publishing a paper.
  • The other person files a patent application to the widget.
  • You file a patent application to the widget within a year of publishing your paper.

Result: You get the patent.

Scenario D:

  • You invent a new widget.
  • Another person invents the same widget, without learning about it from you.
  • You publicly disclose your widget by, for example, publishing a paper.
  • The other person files a patent application to the widget.
  • You decide not to file an application OR wait until more than one year after publishing your paper.

Result: Neither you nor the other person are entitled to a patent.

The fly in the ointment here is what is a satisfactory public disclosure that will preserve your rights?  As discussed here, how similar does your disclosure need to be to the second inventor’s claimed invention so as to prevent her from getting a patent?  Consider the following scenarios:

Scenario E:

  • You invent a new widget.
  • Another person invents the same widget, without learning about it from you.
  • You publicly disclose your widget by, for example, publishing a paper.
  • The other person files a patent application to the widget.
  • You apply for a patent to an improved widget (different from what is found in the paper) within a year of publishing your paper.

(Possible) Result: Neither you nor the other person would be entitled to a patent.  The other person is prevented from patenting because of the paper you published.  You are denied a patent because your paper is prior art as it does not disclose the same “subject matter” as what is contained in the patent application.

Scenario F:

  • You invent a new widget.
  • You publicly disclose your widget by, for example, publishing a paper.
  • Another person invents and discloses an improved widget after reading your paper.
  • You apply for a patent to your widget within a year of publishing your paper.

Likely Result: You are not entitled to a patent because the other person’s disclosure is prior art – it does not disclose the same subject matter as what is disclosed in your patent application.  The other person may be entitled to a patent if the improved widget is non-obvious in view of your paper.

I envision that scenarios E and F will be litigated and there will be some resolution as to the effect of similar, yet different, subject matter in a disclosure, whether by the inventor or another person.  Until then though, inventors should use caution in what and when they disclose.

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