Re: Establishing Priority for Patents

From: Charles Oppenheim <C.Oppenheim_at_LBORO.AC.UK>
Date: Wed, 14 Feb 2001 11:53:08 +0000

Maybe Adrian and I aren't that far apart.....
>
>Are we all agreed, therefore, that to protect ones interests in a patent
>case FILE FIRST. After that it the material should be regarded in the
>public domain.

Agreed
>
>You have 1yr gracetime to protect your position regards the US. What is
>nice about that is by then your IP has been aired and discussed and any US
>patent is likely to be pretty sturdy.

This is misleading. There is a one year grace period *for everywhere in
the world*, thanks to the international convention. The one year grace
period for USA is over and above that - an additional protection for those
who make a public presentation in the USA, and then have one year to file
in the USA without damaging the patentability of their work. This US rule
is only available for those who FIRST file in the USA in any case, i.e. US
citizens or corporations. (National patent laws make it impossible to file
first in any country but your own). The one year grace period under the
international convention gives the authors ample time to poublicly present,
to put up e prints, to discuss with referees, to refine their ideas and
then to submit further patent applications world-wide. As long as their
further patent aplications do not represent *new material* (as opposed to
amplifying or explaining what was in the initial application) compared to
the the original application, they are completely safe. That's why the
initial patent application should be worded as broadly as possible.

>
>The trouble is that if something is really 'hot' (and this is usually
>recognised later) then really 'hot' lawyers will do everything in their
>power to undermine a patent case including finding the (semi)public
>disclosure instances.

That's exactly why filing for a patent first is essential, and it is unwise
to think in terms of the US public disclosure grace period as protection.

 Academic insitutions are not in a good position to
>defend themselves in such situations and commercial companies don't like
>buying/licensing weak patents.

This is why academics should use patent agents to help them draft that
first patent application. Companies are totally happy to deal with
academics' patent applications.

Incidentally, the UK used to have a one year grace period similar to the
USA, but this was dropped as I recall, in the 1977 Patents Act; I do not
know why it was dropped.



Professor Charles Oppenheim
Dept of Information Science
Loughborough University
Loughborough
Leics LE11 3TU

Tel 01509-223065
Fax 01509-223053
Received on Wed Jan 03 2001 - 19:17:43 GMT