Posts Tagged ‘public disclosure’

Prior Use Rights – a double-edged sword

Chess piecesOne interesting aspect to the new patent law is the section relating to prior use rights.


If you are a small company who hits on a great way of doing things but can’t afford to patent it, and someone, years later, gets a patent for that exact same technology and tries to sue you for infringing their patent, you can now defend yourself against infringement with the expanded prior use rights. You couldn’t do this before except in very limited circumstances involving business method patents and the new law has expanded this right. To take advantage of the defense, you yourself have to have been using the invention in commerce for at least a year before the patent holder filed her application – you can’t just assert that “everybody” was using it although you yourself weren’t. If you can do this though, you have a defense to infringement.


Prior use rights is a double-edged sword however. There are two related ways in which misuse of this right can impact companies:
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.


Prior use rights can be an extremely helpful way in which small companies can defend themselves against companies that have more funding and can afford more robust patent portfolios. Unfortunately, as is often the case, there are still ways in which a useful tool can backfire. This is a potentially troubling, and somewhat controversial, aspect of the new law that the industry will be watching with interest.


Frequently Asked Patent Questions

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Here is a list of the most common questions clients ask me in our first meeting, with links to my posts with detailed responses:

1) Can I get a patent on software and/or business methods? Yes – but the real question is should you?

2) I’ve heard about provisional applications and non-provisional applications; what kind do I need? It depends – on how advanced development is, how soon you’ll be discussing the innovation in non-confidential settings, and how well funded your company is.

3) When do I need to file an application? Timing really does matter and the answer is often as soon as possible.

4) Is it expensive? Definitely. It also takes a number of years to get an issued patent. This means it’s extremely important to determine whether your company would benefit from investing in a patent application – before you file.


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Why Timing Matters in Patent Law

Posted on March 6, 2011 by

Chess pieces 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.

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Protect Patentability When Creating Buzz

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…

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When Creating a Buzz Impacts Patentability

Caution signAs 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.

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