The Perils of Patent Pending

Everyone knows that it is important to file a patent application before they make any public disclosure of their invention. Surely everything’s OK once that application has been filed? Well, maybe…

Publication of your invention (for example, by sale, advertising on the Internet or through social media) after the filing of your patent application can create problems, not for the patent application you have already filed but for later-filed applications that try to claim the benefit of the filing date of the earlier application.

It’s all down to something called a priority claim – the ability of a later-filed application to claim the benefit of the filing date of the earlier application, so long as the later-filed application is filed within 12 months of the earlier application. If the priority claim is valid, the later-filed application validly claims the filing date of the earlier application, and any publication of the invention made on or after the filing date of the earlier application cannot be used to attack the validity of the later-filed application. If the priority claim is not valid, however, then the later-filed application cannot validly claim the filing date of the earlier application. In that case, any public disclosure made before the filing date of the later-filed application may be used to attack the validity of the later-filed application.

One way to avoid this, of course, is to make no public disclosure of the invention before you file the later-filed application. For example, you can ensure that all disclosures of the invention before the later-filed application is filed are confidential disclosures, preferably made under a written non-disclosure or confidentiality agreement. However, this is not always practical, and therefore it is important to do what you can to make sure that the priority claim is valid.

In this connection, the rules differ from country to country as to what is needed in order for the priority claim to be valid. Probably the strictest major jurisdiction when assessing whether or not a priority claim is valid is the European Patent Office. A particular problem that sometimes occurs at the European Patent Office is that the claims of the European patent application do not have a valid priority claim to the earlier application. Claims are the numbered (and often strangely-worded) statements at the back of a patent application that define the protection conferred by your patent application once granted. Claims are therefore a vitally important part of a patent application. Problems can arise at the European Patent Office when there are no claims or claim-like language in the earlier application, or when there are claims or claim-like language in the earlier application, but they are somehow insufficient. The earlier application should therefore, ideally, contain claims or claim-like language that properly seeks to define the invention.

It is therefore very important that the earlier application is just right. You cannot add anything to your patent application once it has been filed, so you need to make sure that the first application contains all of the information that you want it to contain.

In order to get the first application right, get a patent attorney to prepare the first application. While it is tempting to save money at the outset by preparing and filing the first application yourself, do not do it. Certainly from the viewpoint of European Patent Office practice, there is no substitute for getting it right at the outset, and time, money and effort spent getting the first application right is generally time, money and effort well-spent. Your patent attorney should include claims or claim-like language for all the preferred optional features of your invention, especially those optional features that provide a technical and/or commercial benefit.

I have seen many cases where problems have arisen from someone filing their own application without involving a patent attorney. In one case, a client threatened with patent infringement was able to avoid enforcement of the patent because the patent was invalid over the patent owner’s own YouTube video advertising the invention. The patent owner had self-filed the earlier application, without a patent attorney, and the claim to priority of the allegedly-infringed patent from the earlier self-filed application was invalid. The YouTube video could therefore be used to attack the validity of the patent.

It is not uncommon after filing the earlier application to make further improvements to the invention. You cannot add details of those improvements to the earlier application that has already been filed. If those improvements are important, you should consider filing another application covering those improvements before making any public disclosures of the improvements. If you don’t, you may not be able to protect those improvements or use those improvements as “fall back” positions in any subsequently-filed patent applications.

Another reason why a priority claim might not be valid is if the name(s) of the applicant(s) on the first and the later-filed application do not “match”, the applicant(s) being the owner(s) of the patent application. This sometimes happens, though less so now, with patent applications that originate in the US. It was common for a US patent application (the first application, in this case) to be filed in the names of the inventors (the people who actually came-up with the invention), and for a later-filed application (such as a European application) to be filed in the name of a company. If the rights to the first application had been signed-over from the inventors to the company before the later-filed application had been filed, then that was fine. If not, then, depending on the circumstances, the priority claim may not be valid. It is therefore important that such issues are resolved promptly.

How you can help?

As mentioned above, use a patent attorney to write your patent applications. Engage with your patent attorney when they are writing your patent applications. Ensure that your patent attorney has all of the pertinent details of your invention, especially those features that you are keen to protect. If you are thinking about not including certain features in your patent application, discuss this with your patent attorney. You can decide between you whether or not to include those features in the patent application.