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Intellectual Property

Anything You Say (or Do) Can and Will Be Held Against You in a Court of Law

Sanford Warren | March 1, 2002

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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.

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.

  1. 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.
  2. 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.
  3. 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.
  4. 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.


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.

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