Anything You Say (or Do) Can and Will be Held Against You in a Court of
Law
March 2002
In this article, Sanford Warren informs readers
of some of the potential pitfalls that await the patent holder along the road
from first conception of the invention to final expiration of the patent.
by Sanford
E. Warren Jr. and Kenneth T. Emanuelson
Winstead Sechrest
& Minick
We are all familiar with the famous "Miranda" warning from movies and television,
commonly recited as a cop hustles a captured thug off to a patrol car. We all
know that the thug has a right to remain silent, and we all know that he has
a right to an attorney. We also know that the pudgy television cop will have
the thug singing like a songbird long before any of those pesky defense attorneys
show up.
It shouldn't perhaps be surprising that these rules that apply to criminal
suspects under arrest also apply, to a certain extent, to other legal contexts.
Hopefully, it is the rare case in which a patent owner enjoys the unique experience
of having his or her face pressed into a cold concrete floor by the sweaty knee
of a zealous cop, but that experience might in certain cases be preferable to
aggressive courtroom grilling by a zealous patent attorney.
It really shouldn't be surprising that many of the same rules that apply
to criminal law apply to patent law to a certain degree. Actually, in the patent
world, it can be even worse. Anything you say, or do, or your attorney says,
or anyone who has owned the patent before you has said, or that the inventor
has said or might say in the future, can and will be held against your patent
in a court of law.
People that compile statistics on patents tell us that most patents will
never see the inside of a courtroom. In fact, most patents will never even be
the subject of a lawsuit. Ironically, it's sometimes the most poorly drafted
and poorly managed patents that end up in litigation. It's generally those patents
for which the inventor or later owner too often gave up his "right to remain
silent" which give patent infringers the largest arsenal of weapons to use in
destroying a patent.
The Lawsuit Potential during the Life of a Patent
Patent-destroying acts can occur in any of the three major stages of a patent's
life. The first stage is the stage from the act of invention to the filing of
a patent application. The second is the stage from the filing of the application
to the issuance of the patent, referred to in the patent arena as the "prosecution"
phase. The third is the stage from issuance of the patent to expiration of the
patent's term. In this article, I want to make the reader aware of some of these
potential pitfalls that await the patent holder along the road from first conception
of the invention to final expiration of the patent.
Many mistakes can be made between the time that an inventor or a team of
inventors first conceives of an invention and the time a patent is issued on
that invention. Some of these mistakes may be made prior to the filing of a
patent application, while others are more likely to be made during prosecution,
after filing but before issuance. Regardless of when they occur, mistakes fall
into two principal categories. The first set of mistakes includes those that
create defects that can cause a patent to be partially or completely invalid.
The second set of mistakes includes those that don't affect the validity of
the patent, but severely limit the scope of the patent coverage.
As noted above, most patent pitfalls lie between the filing of the patent
application and issuance of the patent. This phase, the prosecution phase, is
a sort of extended negotiation between the patent applicant, or his attorney,
and the U.S. Government. The patent applicant files and prosecutes his application
with the goal of securing the reasonable coverage for his patent, while the
government, through its patent examiners, examines the patent application with
the goal of making sure that the patent application complies with all the statutory
requirements of a patent, and ensuring that the applicant makes his case for
entitlement to a patent.
Dealing with the P.T.O.
This phase of the patent's life contains so many pitfalls primarily because
it requires conformance to a large number of statues and rules, and by necessity
involves a heavy volume of correspondence with the U.S. Patent and Trademark
Office (P.T.O.). As I said before, anything you say can and will be used against
you.
After a patent application is filed, a patent examiner at the P.T.O. will
review it for conformance with the statutory requirements laid out in Title
35 of the U.S. Code. The principal hurdles that will have to be overcome by
the patent application are elaborated in Sections 101, 102, 103, and 112 of
Title 35. Sections 101-103 require, at a minimum, that patents only issue on
inventions involving "products, processes, manufactures, and compositions of
matter" that are (1) useful, (2) new and (3) non-obvious. Section 112 requires
that the subject matter of the invention be fully and accurately described in
sufficient detail.
Conformance with these provisions begins with the very first inventive activities
performed by the inventor, and continues through to the final issuance of the
patent. This article relates principally to those pitfalls embodied in Sections
101 and 102, with later articles focusing on Sections 103 and 112.
Section 101 and 102 Hurdles
The first hurdle, the so-called utility requirement, is generally fairly
easy to overcome in the context of most technologies. At one time, the P.T.O.
saw itself as something of a gatekeeper to prevent "frivolous" and "immoral"
inventions from being patented. The Office has since largely abandoned that
role, but continues to reject applications for chemical compounds and genetic
sequences where there is no known use for the compound or sequence.
(The patent attorney who can't find plausible use for a new chemical compound
should probably turn in his geek registration card and jargon decoder ring.
Every compound I can think of is either a solvent, a lubricant, a fuel, a nutrient,
a coolant, a sealant, an abrasive, a pigment, a catalyst, a binder, a filler,
a conductor, an insulator, or a structural material, and most are more than
one.)
The Office also rejects applications for devices that claim to defy the known
laws of physics, such as perpetual motion machines and warp engines. In spite
of these limitations, the utility requirement is seldom, in practice, a steep
hurdle in technologies outside of genetics.
As compared to the other sections of Title 35, compliance with Section 101
is not difficult, and does not contain nearly as many pitfalls as the other
sections. At the same time, it is important during the course of drafting the
patent application, to pay a certain level of attention to this requirement,
particularly for inventions for which the utility is not immediately obvious.
The second requirement, that the claimed invention be new (or "novel," in
patent-ese), is a much tougher hurdle to surmount than the utility requirement.
The patent must comply with the following "prior art" categories, as outlined
below.
- The claimed invention is compared to everything that was known or used
by other persons in the United States prior to the time that the patent applicant invented it.
- The claimed invention is compared to everything that was patented or
described in a printed publication anywhere
in the world before the time of applicant's invention.
- The claimed invention is compared to everything that was in public use or on sale more than one year prior to
the filing of the inventor's patent application.
- The claimed invention is compared to everything that was patented or described in a printed publication more than one year prior to the filing of the patent application.
At first, these four categories of prior art are a little confusing to sort
out, but they are distinct and separate categories, with each having a particular
and distinct scope. The first two relate to events that occurred prior to invention
by the patent applicant. Although there is no law that I am aware of against
"reinventing the wheel," there is a law against re-patenting it, and this would
be it.
Even if you were born on a desert island without any contact with human civilization,
and you invented the wheel yourself without having ever seen or heard of one,
you cannot get a patent on it. The patent system can be said to reward contributions
to public knowledge rather than ingenuity or creativity in and of itself. This
principle is in contrast to that found in copyright law, for example, in which
a work that is the original creation of an individual can be copyrighted even
if it is identical to the work of another. So, you can't patent what was already
known before you invented it, even if it wasn't known to you specifically. Anything
the prior art says can and will be held against you.
The last two categories of prior art relate to events that occur more than
one year prior to the filing of the patent application. These two categories
include activities by all parties, even those of the inventor himself, if they
occur more than one year prior to the filing of the patent application. In fact,
these categories are most often applied
to the activities of the inventor and of parties related to the inventor. So,
for example, in the case where a researcher develops a new widget and publishes
a technical paper on it, publication of that paper starts a clock running that
will expire in one year. If the inventor has not filed a patent application
prior to the expiration of the one-year clock, the inventor will not be able
to obtain a patent on any inventions described in that paper.
Similarly, if a company develops a new product and begins offering it for
sale to its customers, the first offer for
sale begins the one-year clock running in the same manner as the publication
of the technical paper in the prior example. If the company has not filed a
patent application on its new product prior to the expiration of the one-year
clock, patent protection will not be available. Note that it is the first offer
for sale that starts the clock running. Whether or not anyone buys the product
is not relevant. Anything you have said or done can and will be held against
you, if it was more than a year ago.
In practice, there is often little that can be done about activities that
occurred prior to an inventor's act of invention. In many cases, such activities,
products, publications, and other prior art occurred more than one year prior
to the invention, and definitely prior to, in which case they are also prior
art in the second two categories. It is principally after invention that the pitfalls begin
to show up. It is almost inevitable that an inventor will begin to engage in
potentially barring activities after his act of invention. It is, therefore,
crucial that such activities be communicated to any and all persons involved
in the preparation and filing of the patent application, so that a patent application
can be prepared and filed well in advance of the one-year anniversary of the
potentially barring activity. This includes any and all publications, public
disclosures, and offers for sale.
Meeting, or Not Meeting, the Deadline
So, you're reading this today, and you're aware of certain activities involving
an invention, completely or partly accessible to the public, that occurred more
than one year ago, and you know that the patent application has not yet been
filed. Is all lost? Not necessarily. Although it is always ideal to have an
application on file prior to any public disclosure, and it is definitely a good
idea to have your application on file prior to the one-year anniversary of any
such disclosure, there are certain limited circumstances under which such a
disclosure will be excused.
Principally, disclosure may be excused if it can be shown that, at the time
of the disclosure, the invention was not known to be operable, and that some
level of public disclosure was necessary in order to test the invention. For
example, the first person to invent the automobile would have had an awfully
difficult time testing his new invention without taking it outdoors. In these
limited circumstances, public disclosure may be excused. As noted, however,
it is always preferable to have the application on file prior to any such disclosures,
thereby eliminating a potential weapon for the other side.
Conclusion
Volumes have been written on Sections 101 and 102, and the above is only
the most cursory review of these provisions. The important thing to take away
from this is that any public disclosure has the potential to weaken or completely
invalidate your patent. Accordingly, it is advisable that a patent application
be filed on or before the date of any public disclosure. It is crucial that
a patent application be filed on or before the one-year anniversary of any such
disclosure if the disclosure was not for experimental purposes.
In the next article, I will discuss the manner in which prior art may be
asserted against your patent application during prosecution, and what you can
do about it. Until then, keep in mind that anything you say or do can and will
be held against you in a court of law.
Ken Emanuelson is an associate with the intellectual property section of Gardere & Wynne, LLP.
His clients range in size from small startups to established Fortune 500 companies,
in various areas of technology, from online commerce to aerospace. His regular
practice includes client counseling in all areas of intellectual property law,
patent and trademark drafting and prosecution, litigation, licensing negotiation,
and infringement analysis. In his prior career as an engineer, Mr. Emanuelson
worked for Texas Instruments and Ford Motor Company. His engineering experience
included work in semiconductor processing, factory automation, microwave communications,
aerospace materials, automotive technology, and superconductive ceramics. Mr.
Emanuelson is a graduate of the University of Texas School of Law, where his
course of study focused primarily on patent, trademark, and copyright law. He
also holds a BS degree in mechanical engineering from the University of Arkansas.
He can be reached by email at Kemanuelson@gardere.com.
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