Company sat on product for several years...

[auxbs]

What is the name of your state? AZ

Company A begins development of a product in 1990 but does not release any products nor do they file for a patent. In 1998, Company A has an article published in a paper magazine that announces their product and talks about all of the great features of their product.

Meanwhile, Company B independently develops a similar product in 1999 and releases it.

Meanwhile, Company C independently develops another similar product in April 2001. Their product is publically discussed online during development and is finally released for sale in June 2002.

Company A decides they should file for patent, so they file a patent application for their product in December 2002. Their patent is written such that it would claim Company A, B, and C's products. It is not a continuation of any prior patent.

Questions:

1. Would Company A's 1998 publication count as prior art against their 2002 patent application?

2. Would Company B's 1999 product count as prior art against Company A's patent application?

3. Would Company C's 2001 development postings count as prior art against Company A's patent application?

4. How about Company C's June 2002 product?

5. If Company A is granted the patent, could they use the patent to sue companies B and C for their products that pre-dated the patent application filing date of December 2002?

These are probably very simple questions, but Company A is trying to confuse the way patent law works by implying that because they started development in 1990, they have rights to everything and that none of the art prior to their patent filing date matters.

 

[divgradcurl]

This sounds like a homework problem, but I'll asnwer anyway...

1. Would Company A's 1998 publication count as prior art against their 2002 patent application?

If the publication was "enabling" -- in other words, if the publication gave enough information such that one of ordinary skill in the relevant art could have practiced the invention, then yeah, it could be prior art.

2. Would Company B's 1999 product count as prior art against Company A's patent application?

Potentially.

3. Would Company C's 2001 development postings count as prior art against Company A's patent application?

Again, potentially.

4. How about Company C's June 2002 product?

See above.

5. If Company A is granted the patent, could they use the patent to sue companies B and C for their products that pre-dated the patent application filing date of December 2002?

Not for any infringing activities that occured prior to the issuance of the patent. But if B and C continued to market and sell infringing products after the patent was issued, then they could be sued for infringement for stuff that happened after issuance. Until a patent is issued, the patent applicant has nothing he or she can enforce against anyone else, so there can be no infringement. Once the patent issues, however, anything infringing that is made or sold after the date of issue would be infringing.

These are probably very simple questions, but Company A is trying to confuse the way patent law works by implying that because they started development in 1990, they have rights to everything and that none of the art prior to their patent filing date matters.

There are two parts to an invention: "conception," or the idea, and "reduction to practice," or actually developing a prototype or otherwise making the idea concrete. To obtain a patent, the applicant must show both "conception" and "reduction to practice" -- however, it is perfectly legal, and not all that uncommon, for there to be a significant period of time between the "conception" and the "reduction to practice." Here, it appears that A is claiming "conception" back in 1990; it is possible that they could just now be claiming "reduction to practice" -- however, if there is a delay between conception and reductin to practice, it is up to the applicant to show "diligence" in reducing the invention to practice. If A really did invent, then sat on the invention, then they should not be able to obtain a patent, because the patent system rewards the inventor that comes forward and makes his invention public.

However, if A can somehow show that they were diligently reducing the invention to practice for the entire period, then it is irrelevant that others invented the same thing in the meantime, and they could be issued a patent. Might be kind of pointless now, because if they are claiming "conception" in 1990, then the patent will expire in 2010, regardless of when it issues -- it might not even be worth obtainng a patent now that is only good for a couple of years.

As far as the prior art is concerned, there is no way to tell what is and is not prior art without a detailed analysis and understanding of the invention and all of the facts.

EDIT: One other thing related to prior art. Even if the invention was conceived in 1990, if the 1998 publication was "enabling," then A only had 12 months to file an application. Once there is a public enabling disclosure of an invention, the inventor has 12 months to get the application filed, or he loses the right to file an application.

 

[auxbs]

Thank you for your response divgradcurl!

I guess these questions aren't as simple as we were thinking after all...

35 USC 102 (b):
"A person shall be entitled to a patent unless--the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States"

From what you wrote, it sounds like the big question is whether or not any of the publications one year prior to Company A's patent application filing date were "enabling" or not.

Company A's 1998 article was intended to show off the features of their new product for marketing purposes. It did not disclose hardware schematics or firmware source code to allow others to build it. Basically, this disclosed the "conception" but not the implementation details. A person of ordinary skill in the art would have needed about a year to research and build their own device from this conception of it.

As far as we know, Company B developed and built their own device, but did not publically disclose their hardware schematics or firmware source code to the public, so likely did not publish anything "enabling."

Company C publically disclosed details of their work throughout development that may have been enough to be enabling. The question of whether it was enough is probably too specific and technical to be asked here. oh well.

 

[divgradcurl]

I guess these questions aren't as simple as we were thinking after all...

They usually aren't!

As always, your best bet it to contact a local patent attorney who can review all of the relevant facts of the situation, and advise accordingly.