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ii) Commercial and/or public prior use of the invention
This has to be examined very exactly since, under European law, any kind of publication of the invention may destroy novelty; even in the U.S., a commercial use of your own invention, even if still secret, may question the legal validity of a patent application filed more than a year later.
Generally, the smaller the company the larger the danger that problems are existing. Happy to finally hold the new product's prototype in hands, the Managing Director visits the customer and discloses the invention without any non-disclosure agreement. The next day's patent application can no longer lead to a legally valid patent in Europe and in most countries of the world, apart from the U.S. The corresponding questions are always awkward for the inventors and their Manager; nevertheless, they are to be asked in order to fully comprehend the possible protection available under a given situation.
If the invention has been published previously, proceed as follows:
a. Keep your calm, but summarize quickly and act correctly
If a prior publication of the invention took place e.g. several months ago and if there is clearly no secrecy obligation, neither from an explicit obligation nor due to certain special circumstances, it is simply no longer possible to obtain a valid patent in many countries. However, the examination whether everything has been published previously or whether the surplus may still justify an application is generally not particularly urgent.
The extreme case of an invention-disclosing lecture directly before the patent application is filed is instructive: Since one day is indivisible in most legal systems subjected to the absolute novelty term, a lecture at eight o'clock in the morning is not prior art for a patent application filed at ten o'clock in the evening. Vice versa, a lecture taking place at eight o'clock in the evening is prior art even if the patent application is dropped at the Patent Office at one o'clock in the morning.
However, even if the patent attorney finds out in the conversation with his inventor in Munich at one o'clock in the night that he had completely disclosed his invention yesterday in a lecture with an extensive manuscript, all is not lost even for Europe! Since it is only seven o'clock in the evening of yesterday's date in Washington D.C.. The manuscript (maybe there is a drafted patent application) may be faxed or emailed to Washington - or, if even more time is required, to a Hawaii office - so that the application day in the U.S. may be obtained which corresponds to the day of the prior publication. Thus, the lecture and the manuscript do not even contradict a later application in Europe, claiming said US priority.
This date shift may also be used for rescuing lost priorities. If the patent attorney awakes at one o'clock in the night, drenched in sweat, and realizes that he missed the priority expiring yesterday, he still may try to file a PCT application in Washington. He may have to assign the application to obtain the application entitlement, but such an assignment and a corresponding re-assignment is generally only a minor ill, compared to the lost priority.
b. Consider national or international alternatives
Much too often, inexperienced inventors or managers do not think far enough. They throw in the towel when it turns out for example that their invention was obviously used earlier. They ignore that, besides patent protection, e.g. Germany has the utility model with a 6 months' preclusive period for novelty for which only domestic prior use is relevant (cf. § 3 section (1) Utility Model Act). In other legal systems, a patent may even be legally valid over own obvious prior use. The most important examples:
- U.S.: The invention's publication by the inventor is only prior art if it is older than one year; even prior uses by printed publications within one year prior to the application do no harm (cf. 35 USC 102 (b)).
- Similar to the German utility model, there are both a six months' preclusive period to novelty in Japan and a legal regulation according to which only domestic obvious prior use is prejudicial as to novelty. Thus, an obvious prior use in Germany is not a patent obstacle in Japan for two reasons. Accordingly, a patent application in Japan is well worth-while.
- There is a number of other countries with preclusive periods to novelty so that it is absolutely to be recommended to talk to an experienced patent expert in situations like the ones described in order to find out whether all has been lost.
Is the inventor/applicant authorized to file? In particular in smaller and medium-sized companies, this question is often overlooked with often truculent consequences for the legal validity of a patent-to-be. There are three large complexes under which the inventor, respectively applicant, is not entitled to apply for a patent:
a) opposing contractual obligation
b) unlawful usurpation
c) abandoned third-party invention
To a) Contractual obligations
In any case where the inventor is an employee, it is to be checked whether he is authorized to apply for a patent or whether only his employer is entitled. If, for example, an application programmer working in the chemical industry approaches a patent attorney with the invention of a new technical computer program for controlling the course of a process, the attorney has to question and - if required - elucidate him on the following aspects:
- Is it a “service invention” or a “free invention”?
- Is the invention still to be communicated (“reported”) to the employer? Has the period for the employer to claim the invention already expired?
Inventions of employees are almost always service inventions. In this case, the attorney has to advise the client that an application is opposed by the legal obstacle that he may file but is legally obligated to inform the employer of the invention so that he may decide whether he wants to lay claim to the invention or to affranchise the invention.
On the contrary, the patent attorney has to elucidate the Managing Director of a Limited Liability Company, approaching him with the Research Manager's research report, of the required actions under the German Law Relating to Inventions of Employees, in particular of the necessity of laying claim to the invention in writing; otherwise the employer is not entitled to apply for a patent. Under German law, there is no automatic transfer of the invention from the employed inventor to the employer. This is a surprise for many foreign companies with German subsidiaries where patents are managed by the foreign parent company.
For example, the expiration of the four-months' term for laying a written claim to the invention is generally not yet a disaster if the employee is still employed with the employer. As a rule, the formal deficiency may be healed with a simple contract, agreeing that the invention with all rights, including the right to claim priorities from corresponding patent applications, is transferred to the employer, and that this invention is to be treated as a claimed service invention (best, the description and the drawings of the patent application are attached to the contract). With such an agreement, the missed period for laying claim is virtually "healed". However, there is no right to the employee's conclusion of such a contract.
It is another typical situation that the employer knows of the invention and may already draft/have drafted a patent application with his employed inventor's support before a formal notification by the inventor has been made. It is important in this case to bring to mind that the employer may already claim the invention (in writing!) prior to the formal notification of the invention by the employee to ensure his rights. Such in-advance claim has for example a particular importance if it begins to show that an employee will leave the company very soon and if it is impossible to clarify in the short remaining time which inventions have already been duly communicated by the employee and whether the claiming period has already started.
In connection with the Law Relating to Inventions of Employees, the advising attorney often meets a conflict which he has to consider when handling orders. If the attorney's client is for example a Limited Liability Company and the Managing Director approaches him to find out about his rights as an employed inventor, the attorney has to clarify very exactly whether he may counsel him. The attorney can of course check the award to inventors for his client, the Limited Liability Company. However, he has to pay much attention to the fact that he is to represent the Limited Liability Company's interest and not the Managing Director's one. This conflicting interest becomes even apparent if the inventor casually inquires about his claims to inventor's award, having discussed the details of the planned patent application with the attorney.
The right to file a patent application may also result from a contract, e.g. a license agreement. Another possibility is the authorization to file the patent application solely on the basis of the transfer of the rights to the invention. In all such cases, both the applicant and the attorney are well advised to check the underlying contract as to whether it actually grants the right to file this very invention for the applicant. There are often large unclarities here, with regard to the actual legal concession as well as with regard to the technical definition of the object involved.