Come on folks, how many times do we have to warn you!
A few months ago (TechRoadmap Directions, Issue 1) we discussed a patent case in which the patent holder had to defend itself against the claim that it had failed to file for its patent within the 1 year on-sale statutory bar. In that case it seemed as if the patent holder was going to prevail with his argument that the delivered system was being tested and evaluated under the real-world usage that only the customer could supply, thus skirting the 1 year bar. Although this patent holder will probably hold on to his patent rights, he has had to pay extra to defend them.
In this month's case we examine some real pain - a case in which the patent holder loses his rights and the costs of filing and defending the patent, all because he did not file in timely manner.
The case involves a method for inspecting leads on integrated circuits. Robotic Vision Systems developed the method in the early 90's and filed a for a patent on June 24, 1992. Once granted the patent, Robotic immediately sued View Engineering and General Scanning for infringement. View defended itself by filing a motion for a summary judgment that the patent was invalid because Robotic's system had been on-sale starting in March of 1991 (that is, for more than a year before Robotic's filing date).
The case is particularly interesting because it raises the question of what might happen if you sell vaporware (or at least not-yet-completed products). Although Robotic conceded that it had sold the invention to Intel in March of 1991 (i.e., 3 months prior to the critical date of June 24, 1991), it tried to appeal the finding of invalidity on at least two grounds. First, one of the inventors, it claimed, was skeptical "as to whether the invention would work for its intended purpose" on that date, so the invention was not ready for filing. Second, Robotic claimed, the invention was not ready for filing in March because the software that embodied the invention had not been written yet.
The court reject both these appeals; to the first, it found that "It will be a rare case indeed in which an inventor has no uncertainty concerning the workability of his invention before he has reduced it to practice". More interestingly, in addressing the second point the court found that the inventor's internal disclosure (in March or April of 91) to a co-worker who was going to write the software was a disclosure "that was sufficiently specific to enable [a person skilled in the art] to practice the invention" and thus demonstrated that the invention was indeed ready for filing. Robotic's hesitancy about filing its patent until the invention had been reduced to practice, while at the same time trying to meet their customers' needs as early as possible, left them without the protection on which they had planned.
Robotic's quandary is understandable, particularly when we learn that the rules of the game were changed retroactively. Nobody wants to put in the effort to create a patent application that ends up being abandoned or totally re-written. But the patent laws and the courts have spoken; you can only have a one year free ride. Without a the on-sale bar, a company could retroactively trap competitors who copied what seemed to be a public domain concept. While there would be no penalty for these competitors, they would have to abandon their investments in the suddenly-protected products or processes.
So how do you avoid this pain?
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Actively track all disclosures of possibly patentable ideas. Every interaction between your sales or engineering staff and a customer has the potential for starting the PTO's clock running. Implement a process that flags these events and starts your patent application clock
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File early, file often - Don't fool yourself into thinking you will save money by only filing once, when everything is perfect. Perfection may never come; your ability to protect certain claims may be lost; that elegant, all inclusive patent will likely be broken apart. Besides, a series of incrementally generated patents gives you as much if not more protection.
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Have frequent patent identification reviews - Invention MiningSM with TechRoadmap is the perfect forum for identifying potentially patentable ideas in parallel with the product development cycle. While your engineers continue product development and reduction to practice, TechRoadmap and your patent attorney can be shaping the patent application. You are ready to file as soon as the invention is "ready for patenting".
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Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc serves as an interface between companies and their legal counsel.Copyright 2001 TechRoadmap Inc. All rights reserved.
Bruce Horwitz is Founder of TechRoadMap
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