Pitfalls to Avoid in Procuring Patents’ THOMAS M. SCHMITZ 900 Commerce Building, Cleveland, Ohio 441 15 Received November 2 2 , 1977 The road to the Patent Office is fraught with pitfalls which often can easily be avoided by promptly filing an application for patent. The development of an invention should be documented in notebooks and written memos or reports to provide a clear legal picture of the development of the invention. The patent application itself should present a full, straightforward definitive description of the invention to enable others to reproduce the invention. All circumstances,including prior art affecting the validity of the patent, should be brought to the attention of the Patent Office. “Pitfalls to avoid” suggests that certain fatal events must be avoided on the way to the Patent Office to obtain a valid patent. Too often, the inventor himself can inadvertently cause a fatal event to occur and thus prevent himself from getting a valid patent or perhaps (evenlater invalidate his issued patent. United States Code Chapter 35 sets forth the United States Patent Law. 35 USC lo;! recites statutory bars which set forth events that must not occur within specified time limits prior to filing a patent application. A statutory bar ordinarily means that an application for patent was not filed timely as required by law. Some of the statutory bars set forth in Section 102 are outside the control of the :inventor. For example, the stipulation that the applicant for patent must be the first to invent merely states the basic understanding of United States Patent Law. If one is not the first inventor, then of course he is not entitled to a U S . patent. Aside from rather basic exclusions, the inventor must further avoid certain statutory bars so as to properly establish his right to a patent. ONE-YEAR STATUTORY BARS The most critical events to an inventor are the one-year statutory bars stipulating that an application for patent must be filed within one year of the following events: (a) public use in the United States, (b) public sale in the United States, or (c) printed publication anywhere in the world. The public use, public sale, or printed publication bar can be by the inventor, an associate of the inventor, or by a total stranger to the inventor. A public use bar is putting the invention into public use in the United States in a m.anner accessible to the public. Once the invention is workable and reduced to practice, then a continued public use of the invention can be characterized as a statutory public use. Note that the inventor himself can cause the one-year statute: to toll and thus prevent himself from obtaining a valid patent. A public use is distinguished from a n experimental use which permits experiments to determine the usefulness of the invention. Once the invention is reduced to practice, however, the one-year commences even though further experimentation is conducted to optimize the invention. A public sale is essentially selling or offering to sell products which are patentable pr’oducts or produced by a patentable process. A very narrow exception to the public sale statue can involve experimental products which are too costly to discard. However, this exception is quite rare and the best procedure t Presented in the symposium, “Trends in Handling Patent Information”, before the Division of Chemical Literature, 174th National Meeting of the American Chemical Society, Chicago, Ill., Aug 28, 1977. 0095-2338/78/1618-0061$01 .OO/O
is to promptly file an application for patent within one year of any sale. A printed publication anywhere in the world disclosing the invention, such as in a journal article or a foreign patent, can automatically preclude patent protection. Occasionally an inventor himself may publish; however, the more common situation involves an inventor being aware of a recent publication anticipating the invention but failing to promptly file for a patent. Note that an inventor can swear behind the publication, that is, prove that he conceived his invention long before the publication date, if his application for patent was filed within one year of the publication date. If the inventor filed after the one-year publication date, then the inventor is precluded from showing that he is, in fact, the original and first inventor. Here again, an application for patent should be filed as soon as possible and must be filed within one year of printed publication. The foregoing statutory bars of public use, public sale, or printed publication are by far the most important and the most commonly occurring bars to a patent. Although the statute provides for a one-year grace period, the best procedure is for the inventor to promptly file for a patent as soon as the idea has been reduced to practice and prior to any public disclosure. Although the statute provides a one-year grace period, note that unrestricted disclosures can cause difficult conflict problems (interference) in the patent office, or can even cause a statutory bar if the disclosure leads to a public use or publication by the recipient of the disclosure. Abandonment of the invention by the inventor is still another statutory bar which can prevent obtaining a valid patent and often works in favor of a more diligent second inventor. An inventor can abandon his idea only to find out that a later inventor obtained a patent on the same idea. Abandonment usually means the inventor gave up the invention by doing nothing or by intentionally abandoning a filed patent application. Still a further statutory bar can be encountered by first obtaining a foreign patent prior to filing an application in the United States. This seldom is a problem, although some large corporations file applications in foreign countries prior to filing in the United States. This statutory bar stipulates that a United States application for patent must be filed in the United States before a foreign patent has been issued to the inventor on the same invention. INVALIDATION OF ISSUED PATENTS Conferences on patents quite often stress the need for accurate and coherent record keeping. Notebooks are often the best documentation since development of the data can be 0 1978 American Chemical Society
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recorded contemporaneously. However, all written material, such as memos or reports, are classified as documents and quite often are produced in litigation. Such documents can either support or destroy the authenticity of an invention. An important point to note here is that the inventor’s own critical comments on the scope of the invention, or the merits or usefulness of the invention, are too often utilized in litigation to invalidate issued patents. Inventors should avoid undue negative comments on the merits or scope of the invention since problems in developing an invention quite often are resolved by changes unrelated to the inventive feature of the invention. Written documents should stress positive points such as unexpected results, advancement in the art, and solving problems. Patents ordinarily issue for advancements in the art, but all aspects of the invention need not be improved. Another point to remember is to avoid commenting on the law. Suggesting that your discovery is patentable is probably harmless, although stressing an inventive step of the invention could turn out to be hazardous if that particular inventive step is, in fact, well known. Avoid writing patent claims since patent claims define the exact scope of the invention. Errors on legal judgment by the inventor as well as his lawyer can cast doubt as to the novelty of the invention. Notebooks or memorandums should present a full picture of the invention such as when and how the idea was conceived and reduced to practice. Do not ignore a discovery on the assumption that your invention will be maintained as a trade secret. Background information pertaining to how the idea originated, such as solving a problem or improving an existing process or product, is most helpful in establishing the surrounding circumstances that generated the invention. The invention should be accurately described in detail in a confidential memo to your superior. Code language should be avoided and materials or chemicals should be identified by their generic name so as to be clearly understood by others reviewing the documents for legal purposes at a later date. Documents should delineate a reasonable scope to the discovery and should avoid speculation on unrealistic ramifications of the invention. A further important step in obtaining a valid patent is to prepare a coherent and technically accurate patent application in conjunction with your patent attorney. Note that the intent of U S . Patent Law (Section 8, Article I, U S . Constitution) is to promote public disclosure of ideas in return for an exclusive 17-year patent grant. A patent often is defined as a
SCHMITZ government granted right to make, use, and sell the invention for a limited time in return for the inventor’s public disclosure of the invention. An application for patent must disclose one’s invention to the extent that others can reproduce the invention based on the disclosure presented in the patent. The scope of the invention should be realistically set forth in reciting improvements and unexpected advances in the art. Alleged improvements should pertain to significant features of the invention. Avoid vague patent draftmanship to the extent that the real invention may be obscured. In this regard, United States Patent Law requires that the invention be definitely described as well as definitely claimed. On the subject of describing your invention in a definite and complete manner, note that the best mode or best method of practicing the invention must be set forth in the patent application. The idea of disclosing a less desirable mode while maintaining the best mode secret is very hazardous and can later invalidate your patent. Patent applications should further avoid exaggerations and assertions having a prophetic untested scope. The worst practice is filing applications for so-called paper patents. Ignore old-time myths that valid patents can be obtained based on negligible disclosures or merely speculative disclosures, since this is quickly discovered during litigation. The best advice here is to be realistic, logical, and straightforward in describing the invention in your application for patent. Chemical applications must be supported by working examples and preferably examples that were actually performed. Note that examples and particularly comparative examples should be set forth so as to not mislead the Patent Office. Any critical limitations to the scope of the invention must be set forth and supported by examples indicating that such limitations are indeed important. A very important aspect of filing a U S . patent application is to carefully identify the inventorship entity. Inventorship can be determined by considering the contribution of each inventor to originating the idea plus the contribution of each inventor to reducing the invention to practice. A further requirement is that any relevant prior art known to the inventor or his attorney must be brought to the attention of the Patent Office. Any affidavit submitted to the Patent Office should be carefully drafted so that information is presented in a straightforward manner without misleading the Patent Office.
