Connecticut Invention Convention www.ctinventionconvention.org 860-­793-­5299 ***** This is an interpretation of the current situation and NOT legal advice. ***** ***** To get legal advice, go see an attorney. ***** The New U.S. Patent Process On March 16, 2013, the U.S. changed from a "First to Invent" patent system to a “First to File” patent system, in order to align U.S. patent law with the rest of the world. • Under the current "First to File" system, when two different people independently invent and then file patent applications for the same invention, the person who files first is entitled to the patent. The following real-­‐world activities, performed by anyone, can threaten the ability of an inventor to secure patent protection for their invention if any of these activities occur before a patent application is filed: • Public disclosure of the invention • Public use of the invention (even if the public is not aware of the invention) • Sale of a product embodying the invention (even if the buyer is not aware of the invention) • Offer for sale of a product embodying the invention (even if no one buys the product) The safest practice is for an inventor to file a provisional or regular patent application before any such real-­‐world activities occur. If an inventor needs to disclose the invention to a third party, then the third party should agree to maintain the confidentiality of the invention before the inventor discloses the invention, preferably by signing a non-­‐disclosure / confidentiality agreement with the inventor. Provisional Patent Filing: The patent process can be started relatively cheaply ($65) and quickly by filing a provisional patent application, which acts as a placeholder for the filing of regular patent application within 12 months of the provisional filing. The provisional patent application must provide the same level of information and details as a regular patent. A provisional patent application is not examined by the U.S. patent office, and no patent will issue from a provisional patent application. To get an issued U.S. patent, an inventor needs to file a regular patent application. Basic Rule: Any disclosure in a public place opens the process to anyone and starts a clock that limits the inventor’s options. In the following scenarios, Person A is the inventor and Person B is someone else Scenario 1 A does not tell anyone about their idea. A can file for a patent at any time. Scenario 2 A tells B under conditions of confidentiality about their idea. A can file for a patent at any time and preserves rest of world patent rights. Scenario 3 A tells B without conditions of confidentiality about their idea in a public disclosure. Any time within 12 months, A can file for a patent. However, any time within 12 months, B could file a patent application before A and B could get the patent. Connecticut Invention Convention www.ctinventionconvention.org 860-­793-­5299 Scenario 4 A tells B without conditions of confidentiality about their idea in a public disclosure. Just before this or immediately afterward, but before B does anything, A files for provisional patent (PTO on-­‐line $65); A now has 12 months of protection from the date of filing when B can not file; within the 12 months, A can decide whether or not to file for a full patent (many $1,000). Note: This limited grace period exception exists only in Japan, U.S., Canada, Australia and New Zealand. This disclosure can forfeit worldwide patent rights except in those countries. Scenario 5 A tells B without conditions of confidentiality about their idea in a public disclosure. After 12 months neither A or B can get a patent because A’s disclosure now counts as “prior art” against both of them. This means that the idea is in the public domain and nobody can get a patent What has been decided in the courts: Talking about an invention is not the same as disclosing patentable details. Brainstorming is not creating a patentable idea Legal issues that have not yet been decided in US courts: What is “disclosure in a public place”? True case: Two people talking as they walk down the hallway in the Town Hall is public disclosure. Is a class of students considered to be the public? Is a classroom a public place? Is a public school a public place? The CIC issues A local school invention program may or may not be a public disclosure (i.e., by invitation only) The state CIC event is almost definitely a public disclosure (i.e. open to everyone) Possible actions that may mitigate, but not solve, possible problems A. Teacher explains to students what confidentiality means and the students all hold hands and agree to keep each other’s inventions a secret. (Completing a physical and verbal action) B. Have all local and state attendees (students, parents, judges, anyone attending) sign a confidentiality agreement. (see FIRST Robotics liability and photography agreement) C. Signage at judging events “By entering here, you agree to abide by the confidentiality agreement of the CIC and not disclose any of the inventions.” (Demonstrates our understanding of the importance of confidentiality and an attempt to enforce it.)