First-to-File, First Strike

Prior to the America Invents Act (AIA) little could be done once an entrepreneur suffered an inadvertent disclosure of patentable subject matter.  However, the AIA provides a partial cure: make a shielding disclosure and fast.  

Under the first-to-file rules of the AIA, an inadvertent disclosure could allow a competitor to seize the disclosed material and file their own patent application. The competitor could also modify/improve upon the disclosed material thereby creating prior art against the entrepreneur.  There would seem to be nothing the rightful inventor could do to prevent this occurrence.  But, if they move quickly, the entrepreneur could shield themselves by striking first. 

That first strike could include what those familiar with the AIA refer to as a “shielding disclosure.”   Shielding disclosures are any disclosures made by an inventor for which they subsequently (within a year) file for patent protection.  Shielding disclosures become prior art against every other “inventor” (whether first to file or not) other than the one who made the shielding disclosure.  In other words, if the true inventor acts quickly, they could preempt the competitor’s application by making a deliberate disclosure of their material.

Of course, the question arises, what should be in the shielding disclosure.  Obviously, it should contain the inadvertently disclosed information.  Additionally, the shielding disclosure probably ought to contain any "obvious" variants of the disclosed material.  But that begs the question: what was inadvertently disclosed.  The answer will depend on the situation.  But, the entrepreneur should consider carefully what they include in the shielding disclosure.  Things they fail to shield might be sacrificed to the competitor.  Yet, things they shield will lose their trade secret status (if any) and will lose the ability to gain patent protection in many foreign countries. 

Clearly, inadvertent disclosures should be avoided.  Yet if you suffer one, we at the Villhard Patent Group would be happy to discuss the situation with you.  We can be reached at contact@villhardpatents.com or at (512) 897-0399.  For more information about us please see www.villhardpatents.com.  We look forward to hearing from you.

Should Entrepreneurs Monitor Their Competitors For New Patents?

Now that the America Invents Act (AIA) has kicked in completely, Entrepreneurs should consider monitoring their competitors’ (post-AIA) patent applications and patents as they “publish” and “issue” respectively. 

That is, they should do so if they want relatively inexpensive (sarcasm intended) ways to challenge their competitors’ documents.  The AIA provides entrepreneurs several procedures for challenging these legal instruments.  See our October 4, 2011 posting.  Two of these procedures come with short windows in which to catch the publication/issuance of these documents.  3^rd party citations require the challenger to act before the latler of 1) the first office action for an application or 2) its publication +6 months.  PGR (Post Grant Review) requires action within 9 months of the issuance of a patent.

In deciding whether to make a 3^rd party submission, you should consider whether to do so anonymously.  Anonymity would shield you from identifying yourself as a party potentially worried about the document.  If you want to bring your patents and (to a much lesser extent) applications to your competitor’s attention (setting up a potential case of willful infringement – against them), though, anonymity might not serve you.

PGR represents a different beast.  You cannot maintain anonymity during PGR.  You will almost certainly identify yourself as a potential infringement target, particularly if you lose.

You should also be aware that if you identify a document pertinent to your activities you might be opening yourself up to a charge of willful infringement.  But, it might be better than waiting to be sued.

Moreover, you should be aware that actually identifying a particular competitor’s documents might be hard to do.  For one thing, not every patent-related document identifies the owner.  Such factors might lead to somewhat spotty results.  But doing so with some degree of success is not impossible with skilled help. 

On that note, be aware that these procedures are legal proceedings and you will likely need the help of a Patent Attorney.  We at the Villhard Patent Group would be happy to discuss this subject and other IP (intellectual property) related matters with you.  Feel free to call us at 512-897-0399 or write us at contact@villhardpatents.com.  For more information about us see www.villhardpatents.com.

* Note: this article was co-authored with Jeff Kuo of Hulsey Intellectual Property Lawyers (see www.hulseyiplaw.com).  Jeff can be reached at jkuo.5288@gmail.com