Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman

5 Novelty—The Invention Must Be New

      5.1 STATUTORY REQUIREMENTS

      Starting a development project, the engineer or scientist has at hand the full wealth of known prior technology related to the goals of the project. This is what is defined as the “prior art.” The developer knows, however, that the amassed knowledge of the prior art cannot solve the current problem; the prior art must be advanced to reach the current goals of this new development project. Thus‚ the inventor toils until an advance over the prior art allows the new goal to be reached. At project’s end, the inventor’s advanced structure, and its function or method are measured against the state of the prior art to establish the novelty of the advance, and to ensure that such an advance would not be obvious, given the teachings of the prior art. When the advance satisfies these criteria, patentable invention is made out, and a meaningful patent can be obtained to provide exclusive rights to the owner of the invention, as long as the other criteria for patentability are satisfied.

      5.1.1 Time Limits for Filing a Patent Application

      The time at which a patent application is initially filed is important as it provides a benchmark applicable to the activities of the inventor and to the inventions of others. By way of example, consider a modified version of history regarding the discovery of the wheel as a way of explaining some of the time limits for patentability.

      Suppose the first inventor of the wheel merely recognized the problems associated with moving large loads on rolling logs, which comprises the prior art. At this point, the inventor has only recognized the need for a better structure, and a patent application would not yet be timely since a patentable invention has not yet been fully thought through. A patent application is not proper until a working form of an invention has been fully conceived. At the time when a complete invention is mentally pictured, and is conceived in operating form, such as by prototype or illustration, the inventor may properly pursue patent protection.

In continuing with the example, quite independently of the effort to obtain patent protection on the wheel, the same inventor might have published a description of his or her wheel, or may have built a wagon and gone into the moving business prior to seeking patent protection. Such activities raise another question of timing under the Patent Laws. In the U.S., a patent application must be filed within one year after the invention is first described in any publication anywhere in the world, or placed on sale, sold, used‚ or known publicly anywhere in the world. This is known as the one‐year “grace period,” and is based on the philosophy that the inventor abandons his or her patent rights if a proper patent application is not filed in the inventor’s home country within one year from public disclosure or commercial activity with respect to the invention. As explained below, most other major industrial countries do not have an equivalent one‐year grace period in their patent laws.

      A major exception to the rule that public disclosure of the invention by the inventor more than a year before filing for a patent may destroy patent rights is the case of the public disclosure during a period of legitimate “experimental use” to perfect or develop the invention. The U.S. one‐year grace period does not start until experimentation is completed. Thus, if you conducted further R&D and made changes to the invention after the public disclosure, you may be able to establish that the public disclosure was only an experimental version of the invention.

      For example, in a famous case dating back to the late 1800s, an inventor filed a patent application directed to asphalt paving material that was used for six years on a public highway before the patent application was filed. The U.S. Supreme Court held that the patent was still valid since six years of experimentation were required to determine whether the highway material would hold up under long and continued use.

      Present patent case law dated back to 1946 holds that an inventor cannot publicly offer, use, or sell a product that embodies a trade secret, and then after one year file a patent application directed to patenting that trade secret. The inventor has been given a choice—apply for a patent and disclose your trade secret to the public for use after your patent expires, or maintain the invention as a trade secret that only benefits you and not the public at large. You cannot have it both ways.

      However, there is language in Section 102 of the AIA enacted in 2011 that some patent law scholars have interpreted as allowing one to keep technology a secret, although selling products embodying the trade secret, and later (after one year) obtain a patent on the trade secret. As of this writing, the courts have not handed down a decision on this point, so if this issue is important in your technology development and marketing processes, I suggest you consult with your intellectual property professional for the latest information on this point. Trade secrets per se are discussed in further detail in Chapter 27.

      The law of novelty of inventions also covers situations where an inventor places a product in public use, but the invention is not discernible to the user upon observation. One such case involved the invention of an improved golf ball cover that was marketed by the inventor, which cover comprised a “secret ingredient” that the inventor did not disclose to the public. In other words, the public use of the improved golf balls was a “non‐informing use” of the secret ingredient. The Court held that had the inventor filed a patent application on his invention more than one year after the “non‐informing” use of the new golf balls, his application would have been barred, notwithstanding the fact that the user could not ascertain the “secret ingredient.” The invention was held to be in “public use” for more than one year.

In this non‐informing use case, the Court offered three reasons for its conclusion. First, even the non‐informing use gives the public the benefit of the invention, and the invention has had an impact in the marketplace. Second, even though the complete formulation of the golf ball cover was not available to the user, when the article itself is freely available to the public, it is fair to presume that the secret will be uncovered by potential competitors, such as by reverse engineering, long before a patent would have expired based upon a timely filed patent application.

      Third, the inventor is under no duty to apply for a patent, and is free to elect to contribute the invention to the public. For these reasons, the Court held that the inventor’s non‐informing use of the golf balls with the inventive cover was a “public use” that qualified as prior art in a lawsuit involving someone else’s patent covering a similarly covered golf ball.

      It is also important to remember is that it is highly recommended to keep careful records of the conception of inventions and their development, which also should be signed by a witness. This is to assist later in corroborating the dates that the invention was conceived and reduced to practice, if it becomes necessary to prove that someone else derived, or “stole” your invention from you, as discussed in Chapter 18. A good suggestion is to file a patent application at the earliest practical time, and most importantly before any public description or disclosure or commercial