Protecting Your Ideas

Protect Yourself

Certain events may prohibit or jeopardize your patent rights.

This chapter focuses on what you need to do to protect yourself from

forfeiting your right to patent in the U.S. and in foreign countries.

Avoid Statutory Bars

Many inventors are very excited once they have successfully

reduced their invention to practice. In jubilation, some will immedi-

ately start to show, tell, and sell their inventions before they have

filed their patent application. Unfortunately, all these acts impact

one's fight to obtain a patent. These acts and others are defined in ti-

tle 35 of the United States Code (35 U.S.C.) and are called

statutory

bars.

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Protect Yourself

Most foreign countries require that a patent application must

be filed before the invention is publicly disclosed; otherwise, the in-

vention is not patentable. This type of requirement is called an

ab-

solute novelty

requirement. The U.S. does not have this type of re-

quirement. Instead, the U.S. grants a 1-year grace period from the

time the invention is first made public, either by the inventor or by

someone else, in which one may file a patent application for that in-

vention.

The acts which may eliminate one's opportunity to obtain a

patent or that start the 1-year grace period are set forth in 35 U.S.C.

w This section of the code defines novelty. All of these acts are

date-sensitive and may be committed by:

(1) others,

(2) the inventor, or

(3) both the inventor and others.

ACTS BY OTHERS

Certain acts occurring before the date of invention will prevent

a person from being awarded a patent for the invention. These acts

include knowledge or use of the invention in the U.S., ~ patenting or

describing the invention in a printed publication anywhere in the

world. 2

It is important to realize that known or used differs from

patented or published. By known or used, it is meant that the infor-

mation must be accessible to the public and that one can prove its

existence. The issue is one of public knowledge. For example, if it is

public knowledge that ethanol may be safely consumed as a beverage

by human beings, then one may not obtain a patent for the use of

ethanol to make beverages for human consumption.

Patent rights are lost if before the applicant's date of invention,

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Avoid Statutory Bars

the invention is patented or described in a printed publication any-

where in the world. The applicant does not have to be aware of the

publication. Therefore, references published in foreign countries

may be used as references to prevent a person from getting a patent

for an invention. Publications are not limited to patents and technical

articles. For example, trade catalogs are treated as publications 3 as

well as theses and dissertations 4 if they have been catalogued and are

available to the public in a library. In addition, abstracts of talks pre-

sented at technical meetings are also considered to be publications if

they are made publicly available. Although not yet litigated, it is safe

to assume that articles published on the Internet are also considered

to be publications.

EXAMPLE

A new polymer made from monomers A and B was

invented. A Japanese abstract, published before the

date of the invention and disclosing a polymer pro-

duced from monomers A and B, was found during a

literature search. Because of the teaching in the ab-

stract, the inventor was barred from getting a patent.

WARNING: Publication of the invention before the ap-

plicant's date of invention will prevent the applicant

from obtaining a patent for the invention.

WARNING: The applicant does not have to be aware of

the reference that discloses the invention.

TIP: If time and resources permit, conduct both a U.S.

and a foreign literature search in addition to an Inter-

net search before filing for a patent.