US Federal Law 35 102 (E)

[racheltspoon]

PA

Hello, I am looking to understand the ramifications of US 35 102 (E)
http://caselaw.lp.findlaw.com/scripts/ts_search.pl?title=35&sec=102
and what it would mean if, having first claim on a patent, others later submitted and received patents on very similar claims.

Thank you very much for you help. Please let me know if can receive futher information. If requested, I will email my phone number.

Thank you,

Rachel

 

[divgradcurl]

35 USC 102(e) prevents someone from obtaining a patent on an invention that is already patented. It also bars someone from obtaining apatent on an invention described in a published patent application (some U.S. only patent applications are not published until the patent issues, other applications and any application that is also being pursued in another country is autmatically published after 18 months).

The U.S. has a "first to invent" system -- that is, the first person to invent gets the patent. This is different from basically all of the rest of the world, which uses a "first to file" system -- basically, the first person to file for a patent would get it, even if they were not the first inventor. Even in the U.S., however, the first inventor can lose his right to prevail over a later inventor if the first inventor is found to have concealed or suppressed the invention, or kept it as a trade secret.

I'm not sure what the purpose of your question really is, but that's sort of what 102(e) means.

 

[racheltspoon]

Purpose of Question

We have a patent that several people have infringed on but have not, as of actaully created a product from. The advice given to us thus far has been that legal action should be held off until the infringers begin to utlize the patent. However, recently someone told us that changes in 35 102e, made it so that we can get a fifty percent stake in any inventions that eventually come out of these patents. Do you know anything about this?

Thank you.

 

[divgradcurl]

we can get a fifty percent stake in any inventions that eventually come out of these patents

32 USC 102(e) is simply a bar against getting a patent, it has nothing to do with remedies for infringement.

Damages for patent infringement can be pretty complicated. Basically, if there is no willful infringement, you can recover actual damages -- lost sales, etc. -- from the infringer. If there is willful infringement, I believe that there is the availability of treble damages. However, for there to be willful infringement, the alleged infringer must be put on notice that he is potentially infringing -- this is usually done by sending a letter to the alleged infringer. If the letter is worded strongly enough that it actually accuses the alleged infringer of infringement, however, then they can file a claim (if you already haven't) against you, claiming invalidity.

Basically, I guess the answer to your question is no, 35 USC 102(e) has no such damages provisions (what you describe sounds like a licensing agreement, not something statutory). If you are looking to sue someone for infringement, talk to a lawyer, because patent infringement gets complicated (and very expensive) in a hurry.

 

[racheltspoon]

Do you happen to know, if the provision protects first filing as opposed to if you actually had already received the patent?

 

[divgradcurl]

Do you happen to know, if the provision protects first filing as opposed to if you actually had already received the patent?

Sorry, I'm not sure what you are asking here. 35 USC 102(e), along with a couple of other subsections of 102, concern "prior art" -- basically, if someone else came up with the idea first, you can't get a patent on it.

I'm not sure what you mean by "first filing" in this context.

 

[racheltspoon]

Further refinement of the question

Here's what happened. We applied for a patent. It was refused. A couple years later, a large company with whom we had a non-disclosure agreement, applied for and received a very similar patent. We then re-filed, with some modifications, received our patent. Then a series of very large companies filed for and received very similar patents as well. Now at some points during this time, our original patent became abandoned in the states but stayed active in Canada.

The problem is not just that our original patent was infringed on but the fact as we go to approach potential partners in various ventures, they will be wary of getting involved due to possible legal issues with these very large, multi-national companies. The way I see it, their infringement is interfering with our ability to make money and I’d like to try and figure out what our rights are.

Thanks for your help.

Rachel

 

[divgradcurl]

A complex problem, to be sure.

When you say your original application was "refused," does that mean all of your claims were rejected, and you abandoned the application? The problem here is that you cannot use an abandoned application to prove prior invention. 35 USC 102(g) states that the first to invent gets the patent, unless the first to invent abandons, suppresses or conceals the invention.

Here, you abandoned your application -- which, while is not the same as abandoning the invention, does imply suppression if you did not timely try and refile for a patent -- and Company A, with whom you had an NDA, filed for and received a patent. While this may be a breach of contract issue (depending on the wording of the NDA), there is nothing inherently wrong with this scenario -- you abandoned the invention, so now a second inventor can patent the same thing without running into a 102(e) issue. This may not seem fair, but it fits with the policy of patent law -- you are supposed to give something to the public -- the information in your published patent -- in return for a temporary monopoly. If you keep something a secret, the public does not gain anything from your invention, and therefore the government is not inclined to give it the same level of protection as a patent.

So, you never had an original patent to be infringed on. If you were to go to court and challenge company A's patent on invalidity grounds; you could possibly use the NDA to prove that Company A did not invent the invention, you did, and should not have been granted a patent under 35 USC 102(f). However, even if you could invalidate their patent (unlikely, very few patents ever get invalidated under 102(f)), you wouldn't be able to get a patent because the time elapsed would bar you from getting a patent under 102(b), and the patent, although invalidated, would be a prior art reference under 102(b) or 102(e). Note, however, that you cannot use the original abandoned application to prove invention -- invention requires two steps, conception and reduction to practice, and an abandoned application can only be used to prove conception. So, without some other proof of reduction to practice, you won't be able to prove an earlier invention date, and therefore invalidate their patent.

I'm not sure where you are going with the rest of the post. You never had an original patent, so there cannot be infringement. Your second patent has gone abandoned in the US (failure to pay a maintenance fee, I presume), so you have no patent rights in the US at all. Basically, you have no rights. There can be no infringement without a patent; as I noted above, even if you could get the other company's patent invalidated, it wouldn't give you a patent, and would merely move the invention into the public domain.

I hope that answers your questions. You might want to talk with a lawyer, but it doesn't seem from your post that you really have any patent rights to assert in the US.

 

[racheltspoon]

One Last Question

We did however, receive a patent eventually, but what you're saying is that if the first patent was abandoned here then we don't have first claim rights?

 

[divgradcurl]

Pretty much.

 

[racheltspoon]

really last question

Does the fact that we had the claim was still in process in canada help at all?

 

[divgradcurl]

Probably not. Although you can in general use a foreign application to establish a "priority date" (a date of invention), typically that only works for an application filed within 18 months of the foreign application that is identical to the foreign app. Was the second application (the one that later issued) a continuation application of the prior abandoned application?

In any event, I'm not sure what you have to gain here. You don't have any patent rights in the U.S.; while you could, in principal, try to get the company's patent invalidated by showing that you were the first inventor and you did not abandon, suppress or conceal, this isnot going to give YOU a patent on the invention -- at best, it will move the invention into the public domain. This can be a good idea if you are infringing on their patent or intend to infringe on their patent, but makes absolutely no difference if you are not infringing.

Basically, by abandoning prosecution (unless the second app was a continuation app or divisional app filed before the first app was abandoned) you simply won't be able to show that you invented the invention prior to the company. And be letting your maintenance fees go unpaid, you've allowed your other patent to lapse. Again, you don't appear to have any patent rights that you can assert in the US at present.

If you think differently, or there are other facts that you haven't discussed here, by all means see a lawyer. But remember -- even if you can prove, without a smidgen of doubt, that you were the first to invent this product, it is far too late for yourself to get a patent on it now.

 

[racheltspoon]

Canada

Do you know if Canadia Patents are published similar to US publishing only after the patent is granted? Or are they similar to the forgein patent pending policy that you mentioned in that they are published after 18 months?

Thanks for all of your help. Rachel

 

[divgradcurl]

According to the CIPO (Canadian Intellectual Property Organization) website, Canadian apps are published 18 months after filing.

 

[racheltspoon]

Two questions.


If an NDA does not have any mention as regards term of expiration, can we assume that that non-disclosure agreement if properly signed and dated is valid in perpetuity?


Given that the Canadian Patent Pending (see dates below) was assumedly published 18 months after being on file in the Canadian Patent Office, can we thereby assume that this public disclosure is legally binding and capable of invalidating any subsequent patents on the same broad and narrow claims?

US Patent 1 Filed 4/87 (rebutted twice)
Canadian Patent Filed in 4/88
NDA Signed with Company X 10/88 (there is no term of expiration date on the NDA…
Company X filed patent in 7/1991
American Patent 1 Abandoned 11/88
Canadian Patent Abandoned 4/93
Company X received U.S. patent 3/94