Vol. 10, No. 4, Pg. 32. Time's Up! Inaction Causes Loss of Patent Rights.

• Author: By Michael A. Cicero and Lance D. Reich

South Carolina Lawyer

1999.

Vol. 10, No. 4, Pg. 32.

Time's Up! Inaction Causes Loss of Patent Rights

32TIME'S UP! Inaction Causes Loss of Patent RightsBy Michael A. Cicero and Lance D. ReichIt is commonly known that an inventor can protect his or her rights to an invention by obtaining a patent. What may not be commonly known, however, is that these rights can be forever lost if the inventor fails to promptly assert them.

Under §102(b) of the Patent Act, an inventor is not entitled to a patent if: "(b) 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 . . ." 35 U.S.C. § 102(b) (1998) (emphasis added). "The general purpose behind all the bars is to require inventors to assert with due diligence their right to a patent through the filing and prosecution of a patent application." 2 Donald S. Chisum, Patents § 6.01 at 6-3 (1994).

"PATENTED IN THIS OR A FOREIGN COUNTRY"

The reference in § 102(b) to an invention being "patented . . . in this . . . country" obviously refers to U.S. patents. Regarding foreign document as a "patent" does not automatically mean

34 that it qualifies as a "patent" under § 102(b). One must look to whether the foreign rights are both substantial and exclusive in nature, Ex parte Weiss, 159 USPQ 122 (Pat. Off. Bd. App. 1967), and whether the foreign document is "sufficiently accessible to the public." Manual of Patent Examining Procedure § 2126.

If these standards are met, then a foreign patent more than one year old can constitute a bar to patenting the invention in the United States. In some countries, patent applications are published before an actual patent is granted. These published patent applications are available as references as of the date of their publication because they are "printed publications."

«DESCRIBED IN A PRINTED PUBLICATION»

"The publication bar goes upon the theory that the idea is already in the public domain . . . An inventor is not expected to disclose his invention without seeking a patent within a reasonable time thereafter." Pickering v. Holman, 459 F.2d 403, 407, 173 USPQ 583, 585 (9th Cir. 1972). For this bar to operate, the printed publication must adequately describe the invention. 1 Chisum, supra § 3.04[1] at 3-40 (1991).

A work must be circulated or accessible to qualify as a "publication." 1 Chisum, supra § 3.04[2] at 3-52 (1990). Even a single document will qualify as a "publication" under § 102(b) if a person using reasonable diligence can locate the document. E.I. duPont de Nemours & Co. v. Cetus Corp., 19 USPQ2d 1174, 1185 (N.D. Cal. 1990). Thus, documents that are catalogued and indexed in libraries will be deemed "publications." Baxter Diagnostics, Inc. v. AVL Scientific Corp., 924 F. Supp. 994, 1008 (C.D. Cal. 1996) ("A single catalogued doctoral dissertation is sufficiently accessible to one interested in the art to constitute a printed publication.").

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