By experimental use, I mean testing an invention. Conducting a test in public can jeopardize the resulting patent if a patent application was not filed before public testing started. The patent can be invalidated in at least two ways. First, the patent can be invalidated if an alleged infringer successfully argues that the public testing qualifies as a public use under 35 … [Read more...]
Public use is one of the three bars to patentability that starts the one year grace period for filing a patent application.
Good question. The bottom line is that a contract (i.e., confidentiality agreement or non-disclosure agreement) and a patent application protect your interests in different ways. Hence, the recommended course of action is to do both (1) file a patent application and (2) have the investors and licensees execute a confidentiality agreement to protect yourself. If you don't have … [Read more...]
Inventors are not required to file a patent application before marketing their invention (i.e., product or service) to others. However, doing so is not the recommended course of action because the inventor could lose their patent rights due to the first to file rule. A third party may see the invention, make a slight modification to the invention and file a patent application. … [Read more...]
On March 16, 2013, the United States transitioned from a first to invent system to a first to file system under the America Invents Act (“Patent Act”). Inventors and businesses should consider the following aspects of the law when implementing a patent protection strategy. General rule and the exceptionsUnder the Patent Act, any disclosure dated prior to the filing date … [Read more...]
Under U.S. patent laws, a patent application must be filed within one year of first publicly using the invention, offering the invention for sale or distributing a printed publication. The following case illustrates an example of a device that was not used in public view but still considered to be a public use.In New Railhead Manufacturing, LLC v. Vermeer Mfg. Co., 298 F.3d … [Read more...]