Public disclosure

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A public disclosure is any non-confidential communication which an inventor or invention owner makes to one or more members of the public, revealing the existence of the invention and enabling an appropriately experienced individual ("person having ordinary skill in the art") to reproduce the invention. A public disclosure may be any form of non-confidential communication. For example an academic poster, presentation to a symposium/conference, website article, book chapter, academic journal article, or even an unguarded conversation in a car park.

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Patent law

In some countries, public disclosure may result in the immediate loss of invention patentability unless a patent application has already been filed, and disclosure may be considered to include oral as well as written communication. [1]

Australia

The Full Federal Court of Australia held in Fuchs Lubricants v Quaker Chemical that the patent claims lacked novelty due to public disclosures made by the inventor Mr Thomas before any patent applications were filed. The public disclosures arose in the following way. In about September–October 2010, Mr Thompson conceived the idea of using dyes in hydraulic fluid to enable detection of fluid injection injuries. He considered it would be necessary to conduct trials and experiments using hydraulic fluid in real operational mining equipment, so approached the engineering manager of Peabody Energy Australia Pty Ltd, which operated the Metropolitan mine in NSW. Mr Thompson disclosed the invention by explaining his proposed method (i.e., the invention) and discussed the possibility of running trials and experiments at the Metropolitan mine. A further disclosure occurred about a month later when, in the carpark of the Metropolitan mine, Mr Thompson demonstrated his invention to two Peabody managers. The Court found that these disclosures were not confidential and therefore constituted public disclosures that compromised the novelty of the invention. [2]

United States

In the U.S., public disclosure of an invention results in the loss of patentability of the invention after a period of one year. [3]

35 U.S.C.   § 102 establishes various statutory bars to invention patentability with regard to invention novelty; these explicit bars preclude patentability as exceptions to a general underlying entitlement. The public disclosure bar is one of the bars established in section 102 (b):

"(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States..."

"Printed publications" generally include all paper and electronic forms of publication. For example, books, scientific journals, posters, conference slide presentations, and website articles would all qualify as disclosure media. [3]

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<span class="mw-page-title-main">Trade secret</span> Business information kept secret to gain or maintain a competitive advantage

Trade secrets are a type of intellectual property that includes formulas, practices, processes, designs, instruments, patterns, or compilations of information that have inherent economic value because they are not generally known or readily ascertainable by others, and which the owner takes reasonable measures to keep secret. Intellectual property law gives the owner of a trade secret the right to restrict others from disclosing it.

Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.

A patent examiner is an employee, usually a civil servant with a scientific or engineering background, working at a patent office.

Novelty is one of the patentability requirement for a patent claim, whose purpose is to prevent issuing patents on known things, i.e. to prevent public knowledge from being taken away from the public domain.

Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.

In United States patent law, the on-sale bar is a limitation on patentability codified at 35 U.S.C. § 102. It provides that an invention cannot be patented if it has been for sale for over one year prior to the patent filing.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".

Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a given period of time in exchange for a disclosure to the public how to make or practice the invention.

The United States is considered to have the most favorable legal regime for inventors and patent owners in the world. Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting from a patented technology without the consent of the patent holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

The American Inventors Protection Act (AIPA) is a United States federal law enacted on November 29, 1999, as Public Law 106-113. In 2002, the Intellectual Property and High Technology Technical Amendments Act of 2002, Public Law 107-273, amended AIPA.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.

Egbert v. Lippmann, 104 U.S. 333 (1881), was a case in which the Supreme Court of the United States held that public use of an invention bars the patenting of it. The Court's ruling was colored by its view that the inventor had forfeited his right to patent the invention by "sleeping on his rights" while others commercialized the technology.

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<span class="mw-page-title-main">Canadian patent law</span>

Canadian patent law is the legal system regulating the granting of patents for inventions within Canada, and the enforcement of these rights in Canada.

After claiming, or late claiming, is the practice of filing a US patent application after the publication by a third party of a description of the same invention. This is possible in US patent law with regard to applications not subject to the Leahy–Smith America Invents Act, since an inventor has one year after the publication of the description of an invention to get a patent application on file.

Netscape Communications Corp. v. Konrad, 295 F.3d 1315, was a decision of the United States Court of Appeals for the Federal Circuit. It affirmed that public use or commercialization of an invention more than one year prior to the filing date will cost the inventor his patent rights. The inventor in this case was Allan M. Konrad, a Lawrence Berkeley National Laboratory employee who devised and implemented a method for accessing and searching data objects stored on a remote computer. Netscape moved to invalidate Konrad's patents in U.S. district court immediately after Konrad filed a patent infringement suit against Netscape customers. The district court concluded that Konrad's patents were invalid because they did not meet the public-use and on-sale bar eligibility criteria of 35 U.S.C. § 102b. In particular, the district court found that Konrad (1) placed his invention in the public domain by demonstrating it to others without a confidentiality agreement and (2) tried to sell it to other legal entities, both more than one year before he filed for the patent. The appeals court, upon review, affirmed the district court decision for the same reasons.

<span class="mw-page-title-main">Leahy–Smith America Invents Act</span>

The Leahy–Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress and signed into law by President Barack Obama on September 16, 2011. The law represents the most significant legislative change to the U.S. patent system since the Patent Act of 1952 and closely resembles previously proposed legislation in the Senate in its previous session.

<span class="mw-page-title-main">Novelty and non-obviousness in Canadian patent law</span>

For a patent to be valid in Canada, the invention claimed therein needs to be new and inventive. In patent law, these requirements are known as novelty and non-obviousness. A patent cannot in theory be granted for an invention without meeting these basic requirements or at least, if a patent which does not meet these requirements is granted, it cannot later be maintained. These requirements are borne out of a combination of statute and case law.

References

  1. ↑ "A Guide to Patent Law - Publication and Patent Rights", Harvard University Office of Technology Development Website, President and Fellows of Harvard College, 2012, archived from the original on August 14, 2012, retrieved August 30, 2012
  2. ↑ "FALL FROM GRACE: FULL FEDERAL COURT CONSIDERS REASONABLE TRIAL GRACE PERIOD AND FINDS TWO PATENTS INVALID", IPTA Website, Institute of Patent and Trade mark Attorneys of Australia, 2021, retrieved August 30, 2022
  3. 1 2 "Preserving Your Patent Rights - Protecting Your Ability to Get a Patent: What Counts as a Bar to Patenting", MIT Technology Licensing Office Website, Massachusetts Institute of Technology, 2006, retrieved August 30, 2012
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