Under U.S. Law, the person entitled to receive a patent on an invention is not the first person to make the invention, but rather the first person to make the invention in the U.S. who did not abandon, suppress or conceal the invention.  This makes sense given the constitutional basis for the patent system — to promote the progress of science and the useful arts.  However, it does create a dilemma for a first inventor who is not interested in patenting an invention, but who also does not want someone else who discovers the same invention later to be able to obtain a patent.  One solution available to the first inventor is to create a “defensive publication”.

If an invention was described in a printed publication in the U.S. or a foreign country before the invention thereof by an applicant for a patent or if the invention was described in a printed publication in the U.S. or a foreign country more than one year prior to the date of the application, the applicant will not be entitled to a patent.  Thus, any printed publication early enough in time could bar a subsequent inventor from securing a patent on any invention disclosed in the publication.  Two questions often arise with respect to defensive publications.  First, what is meant by “published” under the patent laws?  Second, how much detail must be disclosed in the publication to achieve the goal of preventing others from patenting the invention?  Of course, the answers to these questions may depend on the situation so you should seek legal advice before proceeding.

Of course, these questions can be avoided by filing a Statutory Invention Registration (SIR) with the United States Patent and Trademark Office.  The SIR permits the inventor to forego the grant of a patent while preventing others from patenting the invention for themselves.  See Hyatt v. Boone, 146 F.3d 1348, 1356 (Fed. Cir. 1998).  A SIR will be published without formal patent examination.  A published SIR is treated the same as a U.S. patent for all defensive purposes and is “prior art” as of its filing date.  SIRs are classified, cross-referenced and placed in the search files, disseminated to foreign patent offices, stored on U.S. Patent and Trademark Office computer tapes, made available in commercial data bases and announced in the Official Gazette.  See MPEP § 1111.  The SIR prevents others from patenting the invention.  An inventor who files a SIR does not, however, obtain any rights to exclude others from practicing his or her invention. 

One problem with the SIR route is the cost.  First, the inventor must disclose the invention sufficiently to satisfy all of the requirements of 35 U.S.C. § 112.  The inventor must submit a specification having a written description capable of enabling a person of ordinary skill in the art to practice the invention, a best mode of practicing the invention and at least one claim.  The inventor must also pay fees to the United States Patent and Trademark Office that virtually are the same as those required for a patent.  Thus, a better approach might simply be to file a patent application, electing to have the application published after 18 months from filing and then abandon the application after the application publishes.  This provides the added benefit of time, time to assess the value of your application and decide whether it makes business sense to actually patent the invention.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com