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Posts Tagged ‘public disclosure’
One interesting aspect to the new patent law is the section relating to prior use rights.
1) “Stealth Prior Art” – A competitor can invent technology, keep it a trade secret, and then later prevent a patent holder from enforcing a patent by showing that the competitor used the technology in commerce before the patent holder filed for the patent. In this way, the competitor acts as “stealth prior art” – no one knew how their technology worked or that they were using it in this way, the market wasn’t benefiting from having knowledge about this technology, and when a party that actually did disclose the technology to the public tries to enforce their patent, they are now faced with this secret prior use that weakens the utility of their patent, at least as to the stealth competitor. There’s something unsavory about the potential for abuse in this type of scenario. For a more detailed discussion of the ways in which prior use rights can be misused, you should check out IP Watchdog’s series of articles on this topic.
2) Pressure to file earlier – one clear way to deal with the possibility of stealth competition is to file as soon as you possibly can, which puts more pressure on already-constrained patent budgets.
The two biggest, non-financial questions to ask yourself in deciding when you want to file your patent are 1) could you have competitors working on a similar invention and 2) when did you first tell anyone about your invention?
Every day you put off filing your patent application is another day someone else has to complicate your efforts to get a patent by filing for a patent on the same or a similar invention. That’s because the date on which you file that application plays a big role in defining what kinds of documents the Patent Office can use in rejecting your application, which ultimately impacts how broad or narrow your patent rights will be and how tough a fight you’ll have to get those rights allowed.
Even if you are convinced that no one else on the planet is working on this invention and that you won’t have to worry about prior art, you may still want to file that application sooner rather than later. As we’ve discussed before, if you make a public disclosure of your invention, you’ll have limited the amount of time you have in which to file that application.
While it’s all well and good to say that you ought to file sooner rather than later, you’ll need to balance these factors against your particular resource constraints. In some scenarios, you may be better off deferring detailed disclosures until you can raise the funds to file an application – or getting coaching from your attorney as to what not to say in your disclosures to others. Alternatively, you may need to make the business decision to gamble that what you’ve got is so innovative that no one else is going to come up with a similar invention before you can file your application. Regardless of your company’s particular situation, keeping these timing factors in mind will help you make sound decisions about your patent strategy.
In my previous post, I discussed some of the painful risks and pitfalls that can occur due to early or inadvertent disclosure of an invention. Public disclosure of your start-up’s next big idea before all of the paperwork has been filed runs a serious risk of voiding your rights to win and maintain a patent.
So, what’s an inventor to do? Let’s break it down into three steps…
As an inventor, it’s not surprising that you want to tell others about your invention, especially if your company is releasing new products or functionality based upon it. For example, you may display a poster and an abstract at a conference, send a marketing team off to a trade show, or give a talk at a networking event. However, in doing so, you may have just unintentionally and permanently voided your right to a patent!
One of the most critical things to understand about patents is how disclosures can impact your patent rights, regardless of whether you are an inventor, an engineer, or the CEO of the next hot startup. Mishandling your IP in the early stages of a product launch can create a long-term risk that could complicate your efforts to win a patent, and potentially even kills financing or licensing deals for many years to come.
This article gets into some of the risks around the issue of disclosure. After we discuss what can go wrong, I’ll cover the best approaches for prevention in Part II.