management files
Basically, the first inventor to file a patent application now wins any controversy over inventorship of a given invention. More important, the first-to-file framework offers a less reliable grace period against prior art that predates patent filing, which makes it even more critical for patent applicants to file their applications as soon as possible. If a civil or structural engineer conceives of a useful invention, filing an application as soon as possible — before any public disclosure — comprises the clear best practice. However, commercial realities often make this best practice easier said than done. Startups and inventors working in accelerators may need to disclose their inventions quickly to potential investors to stay afloat. Sales forces, always notorious sources of public disclosure, will disclose as much novelty as they can as quickly as possible to make sales. Such business pressures can prematurely force public disclosures of inventions to third parties. Although public disclosure of an invention prior to filing does not always kill patentability, it will in many situations. Public disclosure before filing can create lethal prior art, though patent law does provide some protection. The 2011 America Invents Act provides some cover to inventors relating to public disclosure that they make themselves for up to 12 months following that disclosure. But this limited grace period may not provide ironclad protection, and inventors should think twice before disclosing subject matter prior to filing. Similarly, nondisclosure agreements may provide some protection against public disclosure, but only to the extent that contractual obliga- tions may dissuade another party from disclosing information. Inven- tors relying on nondisclosure agreements must realize that if a third party discloses an invention prior to patent filing in violation of the agreement, the inventor may have only a contract claim against the
Cutting through the complexity Understand basic patent filing rules for civil and structural engineering inventors. By Stephen L. Keefe, P.E., Esq.
U.S. patent law provides a successful patent applicant with a legal right to exclude others from making, using, selling, offering to sell, or importing his or her claimed invention. Global patent law comprises a patchwork of territorial rights, with almost all nations offering similar exclusive patent rights. When it comes to pushing a patent application to grant, patent offices worldwide tend to reward inventors who can present their invention’s novelty in terms of tangible structure. Applicants who claim their inven- tions using well-defined features clearly different from the prior art can look forward to an increased probability for success during patent pros- ecution. Because civil and structural engineering technologies rest on such clear structure, these disciplines arm their inventors with a natural advantage in obtaining patent protection. In contrast, more abstract fields struggle with patent law’s aversion to vague, intangible features. First to file Most of the world has operated on a first-to-file regime for decades. The U.S. came a little late to the first-to-file game with the America Invents Act in 2011, which replaced the old American first-to-invent system.
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csengineermag.com
june 2018
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