Monday, March 25, 2013

More First-to-File traps

After reviewing the article Welcome to First-to-File below, consider these additional fact patterns.

1.  You disclose your invention under a non-disclosure agreement to a potential investor.  Less than one year later, that investor writes an article describing something like your invention but adding more features.  You file a patent application after that article and within a year of your first disclosure.  As to the article published by the investor, it is not clear whether it falls under an exception to the prior art.  To fall within the exceptions, it has to be a disclosure by another who obtained the subject matter disclosed from a joint inventor.  In this case, there are elements in the article that were not obtained from the inventor.  There is an open issue as to whether this article falls within the exception to prior art, partially falls within the exception, or is outside the exception.  Expect to see litigation on this topic in the next few years.  In the meantime, file your patent applications promptly.

2.  Less than one year before you file your patent application, your co-inventor publicly discloses your invention as a poor man's provisional, to try to get a one year grace period before needing to file a patent application.  A competitor sees the publication and, before you file your patent application, sells a product embodying your invention.  The public disclosure by your co-inventor is an exception to the prior art under 35 U.S.C. 102(b)(1)(B).  But whether the sale by the competitor qualifies as a disclosure is unclear.  This is another issue for which litigation will be required before we know whether the activity by another, that is not under your control, will forever bar you from being able to obtain a patent.

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