As the dust settles after the storm caused by the conversion of the United States patent system from a first-to-invent system to a “modified” first-to-file system through implementation of the America Invents Act (AIA) on March 16, 2013, it is essential that companies and inventors avoid inadvertent disclosures of the company’s or inventor’s inventions on social media networks and the company’s website.
Social media websites such as Facebook, LinkedIn and Twitter, have changed the manner that businesses communicate and market their products and innovations. Although these tools may be beneficial by creating market “buzz” for new products through rapid information sharing, they may also be detrimental to a company’s patenting practices for the same reason. If disclosures of up and coming products are made on social media websites without the company first filing for patent protection, and the disclosures are then copied by a second party who then files an application based on the company’s social media disclosures, before the company does, then the first-to-file law could bar the company from patenting the invention, whereas the second party could then obtain patent rights to the invention disclosed on the social media site.
Under 35 U.S.C. § 102(a)(1):
A person shall be entitled to a patent unless-
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention
The phrase “otherwise available to the public” provision has not been clearly defined by the AIA, and therefore may arguably include statements made on social media websites and the company’s website. US Patent and Trademark Office Examiner training videos suggest that the provision includes “YouTube videos, Website, and other on-line material”. Accordingly, if an inventor discusses a new invention on a social media website or even on the company’s website, and that invention is copied by a second person (the deriver), who then files a patent application based on that invention disclosed on the web, the original inventor may lose the rights to any subsequent patent that is issued based on the deriver’s filed application.
However, all is not lost for the original inventor. The rights of the original inventor may be protected thanks to two exceptions of 35 U.S.C. § 102(a)(1). Namely, the original inventor would be protected if (1) a disclosure by the original inventor was made one year or less before the application filed by the deriver, or the disclosure was made by someone who obtained the disclosed subject matter directly or indirectly from the original inventor, or (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor. In this case, the disclosure would not be considered prior art against the original inventor (Manual of Patent Examining Procedure 35 U.S.C. 102(a)(1)).
A glaring issue with the “exceptions” is what exactly constitutes a “disclosure”. For example, if the company simply makes a broad announcement of the invention, without any detailed discussions or descriptions, would that “disclosure” be sufficient to allow one of ordinary skill in the art to develop that invention? In the current environment where much innovation and improvement is centered on facilitating a user’s interface with an electronic device, it is possible that disclosure of minor contemplated ‘tweaks’ to an interface would be sufficient disclosure to enable one skilled in the art to craft and file a complete patent application on the improvement. Some of the lack of clarity lies in the fact that the granting clause of Section 102(a)(1) refers to “descriptions” of the invention, whereas the exceptions conferring a grace period refer to “disclosures.” Until these questions are answered by inevitable litigation proceedings, companies would be wise to revisit their social media and website policies and ensure their IP rights remain protected from the outset.
While AIA creates a “modified” first-to-file system by granting the one year grace period, the amount of leniency that will be afforded by this grace period remains untested. In order to benefit from the exceptions, the original inventor may have to pursue extremely expensive derivation proceedings (which replaces the previous patent interference proceedings). Thus, even if the second inventor derives the invention from the original inventor, based on the disclosures of the original inventor, and files a first application, and the original inventor files an application within a year of that disclosure, the original inventor may be reluctant to pursue derivation proceedings to disqualify the first application. The derivation proceedings may be prohibitively expensive for the average inventor or for a single invention in a large corporate portfolio. Moreover, because the U.S. Patent and Trademark Office does not have subpoena rights, it may be extremely difficult for the original inventor to obtain documents from the deriver to prove that the deriver obtained the invention from the disclosures of the original inventor. To the extent that a company or individual can accurately track the information it discloses via the web, it is another matter to identify who actually views a site to show that derivation is a possibility, much less a likelihood. Perhaps for information that is for an “up and coming” product, companies or individuals can request additional information before such information will be made available on the web. Some safeguards should be placed in order to take advantage of the marketing benefits of web disclosure while providing some measure to track potential derivative works.
Without any precautions, if an inventor or unauthorized employee of a company inadvertently discloses an invention on social media networks, and does not file an application based on that disclosure within a year, a second inventor, or deriver, who obtains that disclosure may file an application based on that disclosure, or may modify the disclosure and file an application based on the modified disclosure. The filed application would then be considered prior art against a subsequent application filed by the original inventor.
Moreover, if the original inventor discloses the invention prior to filing an application based on that disclosure, the inventor would lose the right to obtain foreign patent protection in most foreign jurisdictions which firmly require inventors to file the application before disclosure, public use, or offers for sale, and accordingly do not recognize the one year grace period. This is a key difference between the first-to-file system used in foreign jurisdictions, and the “modified” first-to-file system implemented by the AIA. “Modified” in the sense that contrary to the first-to-file system in foreign jurisdictions which have no grace period, the U.S. first-to-file system allows the one year grace period.
Inventors and companies ideally should file patent applications prior to making any disclosures on social media websites or on the company’s website. This protects both U.S. patent rights and patent rights in foreign jurisdictions. At a minimum, a detailed and enabling provisional application should be filed outlining the basic aspects of the invention, and should be followed up by filing a non-provisional application within a year of the filing of the provisional application. This is particularly important in instances where the company intends to obtain patent protection in foreign jurisdictions.
It is imperative that companies regularly and carefully examine their technology portfolios and ascertain the importance of each invention. Detailed provisional applications should be filed quickly for inventions that are of great importance to the company, and applications for which foreign patent protection would be sought. The company has to ensure that a non-provisional application is filed at the U.S.P.T.O. within one-year of the provisional application.
For less important inventions, and for inventions that will not be pursued in foreign jurisdictions, disclosures may be made as a defensive maneuver. In other words, a company may decide to disclose particular inventions in order to preempt protection of a similar invention by a competing company.
Companies should also ensure that employees and investors are aware of the detrimental effects that may result from the inadvertent disclosures of company innovations on social media networks. In addition to having their employees and investors sign confidentially agreements, extra vigilance should be taken for casual disclosures via social media, the privacy of which cannot be guaranteed.
About the Author
Mark Wallerson is an Associate at Sughrue Mion. His practice includes preparation and prosecution of foreign and domestic patent applications, rendering opinions on patentability, validity and infringement in matters pertaining to the electrical and mechanical arts, and consulting with inventors to obtain the optimal protection for their intellectual property.