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[Jp]

This is a thread from an entrepreneur's  forum.

I would like to get a better more clear picture of the differences, between European and American Law. Please bear with me on this;

To the best of my knowledge, . .

Here in America, if the description of an invention has been published,

whether it is patented or not, another American can not make an application
for the same invention, . . .

If this publication were read by someone in Sweden, or otherwise known and
it was an invention not applied for in Sweden, . . then can someone file to apply

for a patent of that invention ?


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Quote From Intellectual Property Forum
JimIvey Forum Moderator
Lead Member

" Well, there's no such thing as a provisional patent. At most, you have a provisional application.
It only preserves your patent rights to the extent it meets the same legal requirements of a real
patent application.


Assuming your application does meet those legal requirements and that your application was
filed less than a year ago, you can safely disclose your invention to anyone without endangering
your patent rights in most of the industrialized world. However, to further pursue those rights,
you'll need more applications."

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Any publication anywhere in the world that describes the core of the invention for which you
want to file a patent application in Sweden will be considered prior art and will eliminate novelty
(and hence patentability) of your invention.


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That may be true, but I don't think so, . . if it is your publication.

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It does not matter whether it is your publication.
Once it has been published you cannot file a patent application anymore in Europe, unless
you have priority rights based on a patent application somewhere else and you're still
within the priority year of that application.


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Let me get another view point before answering that, I'm not saying that you
are wrong, but I can say, it is not exactly clear to me, . . .

I am thinking, . .

a public disclosure in the U.S. allows an American to still have the valid right
to file a Provisional Patent, which is a document have a bearing on the filing
date, and therefore holding a precedent over other applications for a period
of one year, after it has been filed and up to a year after the publication,
. . etc.

It seems that you are saying that under, Swedish or European Law, after a
public disclosure anywhere in the world, . .no patent can be applied for by,
. . anyone? or no patent can be applied for by the inventor ?

[Jp]

This subject may have been over-cooked a little, . . but, . .

if anyone can ad clarification it will be appreciated.

[bartmans]

In all countries except for the US any publication of an invention will have the effect that a claim to that invention in a later filed application will not be patentable because of lack of novelty. This is called the absolute novelty system: any publication in the world, regatrdless of the language and the audience, will be deemed to be prior art if it has been publicly available.

It thus does not mean that you can no longer file an application; you may, and it will be published, but it will never lead to a valid claim on that invention. Moreover (and now may be confusing you): in countries that have a so-called registration system (like France, Belgium, the Netherlands) you will get your application stamped and sealed as a patent; but if challenged the courts will deem it invalid for lack of novelty. This is because in those countries no examination system exists: determination of the validity is left to the courts.

I will leave the exact definition when a published document will form prior art in the US to one of the US patent agents and attorneys on this forum.

[Jp]

In all countries except for the US any publication of an invention will have the effect that a claim to that invention in a later filed application will not be patentable because of lack of novelty. This is called the absolute novelty system: any publication in the world, regatrdless of the language and the audience, will be deemed to be prior art if it has been publicly available.

It thus does not mean that you can no longer file an application; you may, and it will be published, but it will never lead to a valid claim on that invention. Moreover (and now may be confusing you): in countries that have a so-called registration system (like France, Belgium, the Netherlands) you will get your application stamped and sealed as a patent; but if challenged the courts will deem it invalid for lack of novelty. This is because in those countries no examination system exists: determination of the validity is left to the courts.

I will leave the exact definition when a published document will form prior art in the US to one of the US patent agents and attorneys on this forum.

OK, I'll have to study that some, . . but originally as I reflected on the

Quote, from Jim Ivey, . .

What if the public disclosure is not for a patented invention but is a disclosure describing a new invention, where in the U.S. if the author of the disclosure is the inventor and an application has not been filed, the author/inventor, still has 12 months of valid authorship to file a patent, whereby his public documentation is deemed as evidence of credence giving him certain rights to the conception.

Are you covering that aspect in your answer ?

[bartmans]

Are you covering that aspect in your answer ?

Yes, and that is the main difference between the USA and the rest of the world: outside the USA any disclosure, whatsoever, before the filing date (or priority date) of the application will be deemed to be prior art.

[Jp]

Well Done, . . Much Thanks

[Jp]

I do have an additional related question, regarding this rule concerning  disclosure publication and the comparison between the U.S. and Foreign difference.

If I am not mistaken in the U.S. the public disclosure of invention, given the 12 month grace for filing, would provide the benefit to the inventor,  developments occurring during that period of time, and would concern
advantages and technical developments and or changes, which  would not necessarily have been part of or would there after be publicly disclosed.

Before I present a question that regards the differences pertinent to the governing of Foreign and Domestic. policy.

Let me ask this, am I correct in assuming that the inventor who has publicly disclosed the invention or concept of invention, falls within the grace period that allows him the legal possession, or, "Intellectual Property Rights", of that which is has been developed during that time.

[JimIvey]

... whereby his public documentation is deemed as evidence of credence giving him certain rights to the conception.

This sounds as if you might be placing too much trust in establishing first conception.  Such is not helpful at all except for avoiding prior art that precedes the application by less than 12 months (only if followed by reduction to practice with unbroken diligence) and establishing priority over other patent applicants for the same invention (again, with an unbroken chain of diligence from conception to reduction to practice).

In short, establishing first to think of an invention has no utility except in very specific circumstances. 

Regards.

[Jp]

... whereby his public documentation is deemed as evidence of credence giving him certain rights to the conception.

This sounds as if you might be placing too much trust in establishing first conception.  Such is not helpful at all except for avoiding prior art that precedes the application by less than 12 months (only if followed by reduction to practice with unbroken diligence) and establishing priority over other patent applicants for the same invention (again, with an unbroken chain of diligence from conception to reduction to practice).

In short, establishing first to think of an invention has no utility except in very specific circumstances. 

Regards.

Thanks Jim,

I think you may be right, I will look into the definition or what is meant by, " unbroken diligence".

On the whole I am going to have to give this some thoughtful consideration.

[JimIvey]

I will look into the definition or what is meant by, " unbroken diligence".

Invention is conception plus reduction to practice.  So, invention is completed when you've reduced your conception to practice (i.e., made a working prototype or filed an enabling patent application, the latter being considered effectively reducing the conception to practice).

Your date of invention can date back to your date of conception if you work reasonably diligent toward reduction to practice without having "abandoned, concealed, or suppressed" your invention.  See, e.g., Section 102(g).

From what I understand, you're allowed to take weekends and regular vacations without breaking the chain of diligence toward reduction to practice.  However, if you set your idea aside for a few months while pursuing other ideas, there's a good chance that breaks the chain of diligence and the date of invention then becomes the date at which you actually (or effectively) reduce the invention to practice.

Regards.

[Jp]

Thanks Jim, . .

While I'm at it, then, this must be referring to, "proof of diligence", I would think.

Meaning, notes, logs, etc., the thing is if that is correct than what happens when a technology, might be considered mind boggling, like a satellite communication gadget and might take a lot of, "un-notable", thoughts,.

Hope this isn't to trivial or redundant to deserve an answer.
 

[JimIvey]

What large companies do is have scientists and engineers summarize their work every day or so and have each page witnessed (with signature) by the scientist/engineer in the next cubicle. 

Software people (like me) have it a little easier as keeping all versions of the prototype as it evolves from a thought to a functioning model is pretty easy.  This is particularly easy if you use some sort of versioning software in your development.  So, various versions will all be dated and their reasonable spacing, chronologically, helps show reasonably diligent effort without unreasonable cessation.

it's all very fact specific; impossible to answer, really.

The lesson ought to be this:  don't rely on first-to-invent.  Treat the US as first-to-file and things will be easier for you.

Regards.

[Jp]

Thanks for your advice Jim.

[Jp]

The question arises, if a magazine in Yugoslavia, publishes an article referring
to a new technology, and that happens per chance without your knowledge,
to become the subject of an invention application,
(provisional or otherwise), . . .

is that considered publicity is if were to come into controversy at some later
time ?

[bartmans]

Yes, I'm afraid this would be prior art.
The issue is whether a document (or in whatever form, it could be e.g. a tv broadcast) was publicly available before the filing date (viz priority date) of an application. It does not matter in what language and if someone actually has read it.