Public Disclosure – What Happens If Someone Files for a Patent Before You Do?

If an inventor disclosed his/her invention to his partners/university/employer, probably had some form of public disclosure, but did not have a provisional patent – what happens if a person with a similar invention had a provisional patent filed which could come after the first inventor’s disclosure? Which inventor gets the patent?

The inventor entitled to a patent would be the first inventor to file a patent application. This is known as the First-Inventor-to-File patent system that the US adopted in March of 2013. The only way that the earlier inventor can restore his/her patent priority to the invention in this scenario is if the earlier inventor can prove that the first-filing inventor derived the invention from the earlier inventor’s public disclosure.

If this cannot be proven, there are a couple other avenues. First, we must consider what kind of patent application that the first-filing inventor may have filed. A provisional patent is NEVER disclosed by the USPTO to the public. They are kept confidential. Provisional applications also don’t undergo patent examination. Once the first-filing inventor converts the provisional patent application to a non-provisional utility patent, then patent examination begins. At the 18-month mark of patent examination, the USPTO will (with some exceptions) publish the utility patent application for public inspection.

Now, once the application is available to the public, earlier-inventors may submit evidence to the patent examiner of prior public disclosure (also known as prior-art). This evidence would be considered by the patent examiner and may be used to prevent the first-filing inventor from obtaining any patent rights. This however, does not entitle the earlier-inventor to any rights themselves.

The best thing for the earlier inventor to do in this scenario to preserve their own rights with (for example, a provisional patent application) within 12 months of the public disclosure. Then, when the first-filing inventor’s patent application publishes, the earlier inventor may attempt to oppose the first-filers application by proving that the first-filer derived the invention from the earlier inventor’s public disclosure. Having successful opposed the first-filers application, the earlier inventor’s patent application now takes the spot for patent priority!

This process is complicated and this is why it is important to have at least a provisional patent application on file before any public disclosures are made!

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

How Is Licensed IP from a University Affected During an Acquisition

If a startup company uses an exclusive licensed IP from a university, what usually happens if the company wants to get acquired by a larger company? Do large companies usually avoid acquiring a company with a licensed patent?

The question can be answered whether or not you have an exclusive license to the IP from a University, an Individual, or an Entity. We must first visit the terms of that license agreement to determine whether the agreement includes a Successors & Assigns clause. This clause states that if either party is acquired, the acquiring party is subject to the agreement just as if it were the original party to the agreement. It means that if someone were to acquire the licensor (e.g., the entity granting the license), then that acquiring entity would be required to honor the terms of the license. Similarly, it means that if someone were to acquire the licensee (e.g., you in this case), that the acquiring entity would be entitled to the same terms of the license.

In some instances, the Licensor writes in the agreement that the terms of the license should be renegotiated upon an acquisition of either the Licensor or the Licensee.

The next thing we should consider are the actually terms of the license and what it would mean to the entity acquiring inheriting the licensing agreement. If the entity subject to the license highly relies on the license agreement, then the acquiring entity will carefully scrutinize the terms.

For instance, when does the license expire? What happens when the license expires? Will the licensor be willing to renew the license to the acquiring entity? Are there any conflicts of interests between the licensor and the acquiring entity (do they want to do business with each other)? Will the licensee be able to provide his/her products/services without such license? Is it possible to design proprietary products/services to circumvent the license? How much of the company’s value/worth is associated with/relies on having the license? Can the acquiring party get such license themselves and thereby eliminate the need for your company altogether (exclusive licenses prevent this)?

In general, even large companies have many license agreements they are bound to themselves. They acknowledge that this is a normal part of business. However, if your company will collapse if such license agreement is not in place then it may be harder to be acquired.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Intellectual Property 101

Below are slides from the two-part workshop that will help you understand the basics of intellectual property protection.

 

Source: Smartup Legal

The 2 Most Common Rejections of a Patent Application

Several months after your patent application has passed preliminary examination, the process of substantive examination will begin. During substantive patent examination, a patent examiner is assigned to review your application. The patent examiner will, among many other actions, assess your patent claims and perform a patent search based on your claims.

If the Examiner finds prior art (previous patents, applications, or publications) that is relevant to your claimed invention, he may issue one of two rejections: 1) a rejection indicating that your claimed invention is not novel in view of the prior art (this is known as a 35 USC 102 rejection); and/or 2) a rejection indicating that your claimed invention is obvious (non-inventive) in view of the prior art (this is known as a 35 USC 103 rejection).

The 102 rejection indicates that the Examiner found your entire claimed invention in a single reference. The 103 rejection indicates that the Examiner had to combine one or more references together in order to derive your claimed invention.

You should carefully review the references to ensure that the Examiner has both a proper understanding of your claimed invention, as well as a proper understanding of the cited reference. If you find room for disagreement, you may traverse (or argue) the Examiners rejections. In many instances, you are entitled to hold a telephonic interview with the Examiner. You’ll find the Examiner’s phone number on the last few pages of the rejection documents (or Office Action) sent from the Examiner.

Patent Examiner’s prefer that you fax or email them with an Agenda for the interview prior to scheduling the interview. The agenda’s do not need to be detailed, but the more detail you provide the Examiner with up-front, the better feedback you will receive from the Examiner.

It is not recommend that an applicant/inventor submit any official response to the Examiner in writing. Rather, any materials provided to the Examiner for the interview should clearly be marked “FOR INTERVIEW PURPOSES ONLY”, so that they do not get entered into the official record. The most common mistake inventors make is that they argue how their invention differs from the prior art cited against their patent claims. Instead, you should either argue how your CLAIMED invention (as described in the claims) differs from the prior art, or amend your claims so that they distinguish your invention from the prior art.

Conducting this interview is a good first step in assessing the status of your matter, but it is always recommended that you speak with a licensed patent attorney prior to proceeding with any formal response to the USPTO. Remember, anything you write in the formal response Can and Will be used to limit your patent rights! Even obvious characterizations can be construed to limit the scope of your patent rights!

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Combination Pillow and Crash Helmet – Interesting Patents

After stuffing your face with every type of dip imaginable and screaming at the TV for 4 hours, the Monday after the Super Bowl can be a rather grueling day at work. Although originally #patented for airplane use in 1968, the ‘Pillow Crash Helmet’ is a super convenient way to grab some quick Z’s right at your desk. I’m sure your boss won’t notice this subtle contraption.

pillow-helmet-patent

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

andrei

Source: Smartup Legal