The United States follows a first-to-invent rule wherein the first person to invent is awarded a patent.
[Update: On or after March 13, 2016, U.S. Patent laws transitioned to a first inventor to file regime but the laws determining when a reference is a printed publication remain. Also, the first-to-invent rule still applies to some patent applications. Seek competent patent counsel if you need to know which regime your patent applications falls under. Moreover, the change increases the risk of marketing one’s invention before patent pendency. ]
For example, if an inventor can prove that he or she conceived of the invention before someone else and diligently worked toward making a working model or filing a patent application, then that inventor will be awarded the patent. However, this proof of first-to-invent can only be used for up to one year prior to filing of your patent application. If a “printed publication” such as a brochure, advertisement, etc. disclosing the same invention was published more than one year before the inventor filed his or her patent application, then such document bars the inventor from seeking patent protection on his or her invention. If the date of the printed publication is less than one year prior to inventor’s filing date, then then the inventor can overcome the printed publication if the inventor can show that he/she conceived of the invention prior to the date the printed publication and was diligent in making a working model or filing his/her patent application.
The following case illustrates whether a particular printed document can be considered a “printed publication” and how to determine when the document became a “printed publication”. In In re Hall, a protest was filed in relation to the patent application at issue. The protest is a document submitted by a third party explaining reasons that the Patent office should reject a patent application. The third party submitted a doctoral thesis found in a German library. The doctoral thesis was on point with respect to the invention. The patent applicant conceded that the doctoral thesis would prevent the patent application from maturing into a patent if the doctoral thesis is a “printed publication” with an effective date more than one year prior to the filing date of the patent application at issue.
The Court held that the doctoral thesis became a printed publication when the library indexed the doctoral thesis. Based on correspondence with the librarian which stored the doctoral thesis, the doctoral thesis was indexed, cataloged and shelved (i.e., publicly accessible) more than one year prior to the filing of the patent application based on the routine business practice of the library. The Court affirmed the Patent Office’s rejection of the claims. In re Hall781 F.2d 897, 228 U.S.P.Q. 453 (Fed. Cir. 1986).
Based on the foregoing case, even a remote paper with little to no circulation may be considered a printed publication. Accordingly, when consulting with your patent attorney, you should disclose all types of publicly available papers related to your invention to your patent attorney so that any issues can resolved earlier than later.