US Law Reform: Prefiling Protection for Inventors under revised S515
US Law Reform: Prefiling Protection for Inventors under revised S515
The Canadapatentblog postings of November 16, 2009 and January 31, 2010 addressed the scope of the draft novelty requirements under US Senate bill S515 as originally approved by the US Senate Judiciary Committee in April, 2009. A proposed revision of that text has now been published by the Senate and is reproduced in the Patently’O blog posting of March 9, 2010 available here:
http://www.patentlyo.com/patent/2010/03/patent-reform-act-of-2010-proposed-first-to-file-statute.html#comments
The language used in this revision expresses much more clearly the apparent intent of the legislators. The extensive Patently’O blog commentaries on this revised text finally show that interested members of the patent profession are beginning to attempt to address the real meaning of these provisions. These commentaries are all well worth reading.
In the Canadapatentblog posting of January 31, 2010, the key recommendation was that, under the new scheme being proposed, persons intending to obtain patent protection in the United States should: “file early and file often”. Some of the key points to consider are as follows:
- initial priority patent filings including US Provisional applications should be as complete as possible in order to meet 35 USC 112 requirements
- foreign priority filings will enjoy the benefits of the US grace period provisions equally with the filing of a US Provisional application
- every patent filer should take advantage of the right to make additional filings during the priority year and consolidate the disclosures of all such filings into the final, non-provisional, patent application that may then be used around the world
- the proposed new US patent law includes a Canadian style self-originating grace period which applies to self-originating disclosures, i.e. disclosures originating from the inventor associated with the filing
- the proposed new US patent law includes an additional feature present in the following sections:
35 USC 102 (b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— …….
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…….
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— ………
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; ………
These two provisions apply respectively to neutralize otherwise patent-barring prefiling events that would,
a) in respect of (1)(B) constitute public disclosures that make the invention “available to the public” or constitute a “public use” or “offer for sale” of the invention; and
b) in respect of (2)(B) constitute a prior filing at the US patent office, taking into account the right of foreign applicants to claim the benefit of a foreign priority abdication.
These two saving exceptions therefore address the fundamental patent novelty bars under the new proposed legislation established under the novelty bar of 35 USC 102(a)(1) reproduced further below, and the bar established under first-to-file provisions.
The exceptions of 35 USC 102(b)(1)(B) and 102(b)(2)(B) provide a one-year grace period of permitted public disclosure originating from the inventor associated with the US patent application. The exceptions protect an applicant from any subsequent acts initiated by independent third parties. In both cases, the key language in respect of these exceptions is: “the subject matter disclosed (by a third-party) had, before such disclosure (occurred)/(or was effectively filed), been publicly disclosed by the inventor”. Such an initiative by the inventor, i.e. publicly disclosing the invention, gives the inventor an effective filing date in the United States patent office which will shield the applicant against any subsequent public disclosure or patent application made by the independent party for the relevant subject matter. This is an absolutely new initiative in the history of patent law.
The obvious intent of this provision is to shelter individuals who publicly disclose their invention during the US one year self-originating grace period from the potentially damaging effect of prefiling disclosures or earlier filings made independently by others during the same priority year.
Such a provision is not part of the Canadian patent law as it was amended in 1989. Under the provisions of that law an applicant must effectively file an application in Canada before any public disclosure of an invention irrespective of the Canadian one year self-originating grace period. The same requirement applies in respect of competing filings: an applicant must file an application in Canada before any earlier filing is made by others irrespective of the existence of the Canadian one year self-originating grace period. Cases have occurred in Canada based on such fact situations, invalidating the patent rights of inventors who chose to wait-out the one year self-originating grace period before filing an application. It is wrong in Canada to delay filing for up to 12 months from an inventor’s own first public release of the invention to the public (e.g. by a sale).
The above quoted portions of the proposed revisions to US Senate bill S515 would prevent such a patent invalidating event from having force in the United States. Such provisions would shelter a university professor or private inventor who chooses to either present a paper or demonstrate an invention in public during the priority year. For those in favor of preserving rights of inventors, these provisions are obviously appropriate and desirable.
An interesting distinction, arises however, in respect of the use of the words “publicly disclosed” in these provisions. In the earlier section establishing the ultimate standards for novelty, patent barring events include any case where the claimed invention was: “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public”, vis:
35 USC 102 Conditions for patentability; novelty
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;
Will the courts agree that any initiative by a patent applicant whereby the patent applicant took steps so that:
“the subject matter disclosed had, before such disclosure (occurred)/(or was effectively filed), been publicly disclosed by the inventor”
will be sufficient to overcome the bars under 35 USC 102(a)(1)? It is probable that “publicly disclosed” and “available to the public” will be treated as being equivalent. In both cases, jurisprudence developed in Europe and Canada suggests that for a disclosure to make something “available to the public”, the disclosure must be “enabling”, as understood under patent law.
But what about: “in public use, on sale”? These are patent barring events as well, but it is not clear whether such events need to provide a public disclosure which is “enabling”. Established US jurisprudence clearly does not require that the on sale bar must be associated with an enabling disclosure to a member of the public. And in some cases, such an enabling disclosure is not required under the public use bar.
If the authors of the new revised proposed US legislation wish to fully protect inventors who choose to publicly use an invention or offer an invention of undisclosed character for sale, then Senate bill S515 will still need further revision. A public use or offer for sale will not always cause an invention to be publicly disclosed.
It’s hard to imagine that the courts would rule that a full, enabling, public disclosure would not shelter an inventor from a subsequent third-party public use or offer for sale of non-enabling character occurring before the inventor’s filing date. But further consideration should probably be given to making additional amendments that would foreclose that possibility. There is a good prospect, however, that a third-party non-enabling public use or offer for sale occurring before an inventor makes a public disclosure of his invention would be fatal to do an application filed by that subsequent inventor.
The changes proposed to Senate bill as 515 are an improvement over the first-to-file with a self-originating one-year grace period system presently in effect in Canada. The initiative of the US legislators is to be applauded. But no one should assume that under the new US scheme, if it were to come into force, it would be safe for inventors to wait up to one year from their date of conception of a truly new idea before filing an application in Washington.
The new law would preclude the granting of a patent in any case where an independent third party takes steps which cause the true inventor’s claimed invention to be: “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” anywhere in the world before such inventor makes his US filing (or effectively does so by making a priority filing), or takes the necessary step of disclosing such invention publicly to ensure preservation of his US patent rights. Accordingly, the admonition to: “file first and file often” would still apply, but amended to read: “file or disclose first and file or disclose often”.
David J. French
Ottawa, Canada
March 17, 2010