From time to time, foundries, foundry suppliers, and casting end-users develop inventions for which they seek patent protection. This could include a new austempered ductile iron composition, a casting made from that composition, a method of making that composition, or a novel molding machine. While these are a few examples, the limits of the invention are constrained only by what the inventor can dream of. If you or your company apply for U.S. patents, this column will serve as a brief review of some considerations of U.S. law that have changed in the past few years. The following law changes should be kept in mind prior to and during the patent application process.
As of March 2013, the America Invents Act (AIA) legislated some important changes to the patent law, and patent applicants need to be aware of these changes to more effectively apply for U.S. patents. Perhaps the most significant change from the AIA is the U.S. moved from a “first to invent” regime to a “first inventor to file” regime. Simply put, an applicant can no longer gain rights over a later applicant for the same invention by proving that she invented the device first. Now, the inventor must be first to file, and this encourages inventors to file patent applications early in the process to help ensure that patent rights are maintained over your competitors who may be working on similar inventions.
“Prior art” is a term that refers to patent documents and other disclosures that can be used to defeat a patent application. The prior art available to a patent examiner during the patent examination process in the U.S. is defined by law. One challenge for patent applicants is to identify applicable prior art and thus avoid overlooking potentially fatal prior art. The AIA changed fundamental assumptions defining what will and will not be considered prior art under U.S. law. For example, public disclosures anywhere in the world in any language before your patent application filing date may be considered prior art. In other words, the new definitions remove geographic and language restrictions on prior art and will greatly expand in view of U.S. law what now may be considered prior art. This can add significant hurdles to an applicant because of the large amount of information available to us in many different languages. For example, patent applicants and even patent search experts may have difficulty finding and interpreting patent documents from the Far East that are written in symbolic character languages.
Beneficially for patent applicants, commonly assigned patent applications and subject matter developed under joint research agreements can be used to eliminate some prior art. Under the AIA rules, patents and inventions assigned to a single company can be disregarded as prior art if the invention described in a patent application is assigned to the same company. The same is true for joint research agreements. In one example, if a U.S. patent examiner cites the patent of Company A as prior art against a later Company A patent application, that patent reference can be disregarded under the principle of common assignment.
Here are some suggestions that might improve your or your company’s application process in light of the recent changes in U.S. patent law:
• Develop company-wide employment agreements, employee handbooks and company policies that require employees to promptly report inventions to the company. The employment agreements and employee handbooks should provide that inventions are automatically assigned to the company.
• Develop a company strategy to promptly review all employee inventions for commercial value. For those inventions determined to have value, promptly decide how to protect the invention (trade secret, patent or copyright). For inventions that the company decides to protect through patenting, develop a procedure to promptly file a patent application.
• Develop company forms and policies requiring visitors and other members of the public to sign non-disclosure agreements as a condition for entering company premises where an unprotected invention may be in use.
• Train employees on the importance of not using any invention in any setting that could be considered public until a patent application is filed for the invention.
• Train employees of the importance of not marketing or accepting orders for a product incorporating an invention until a patent application is filed for the invention.
• Train employees about the importance of not disclosing an invention, either in writing or verbally, until a patent application is filed.
Additionally, it is best practice to not consider “disclosure” in the AIA as replacing a patent application filing; publishing is not a substitute for filing to obtain a strong patent position on the invention. An inventor or engineer who has publicly disclosed an invention should file a patent application promptly or, better yet, before disclosure because a mere public disclosure will never provide an effective filing date. In contrast, an earlier patent application filing date protects against competitors filing patent applications for similar or the same inventions later. Furthermore, disclosure before filing may be fatal with respect to international patent rights.
Click here to see this story as it appears in the July/August 2017 issue of MCDP