2001 - Volume 2 - Journal of Engineered Fibers and Fabrics

INJ DEPARTMENTS
NONWOVEN
PATENT REVIEW
48 INJ Summer 2001
Jeopardizing the
Patent Application
Early in the career of every good
product development researcher an
important lesson is learned. This lesson
centers on the rule of law that “a new
patentable product must not be offered
or sold in commerce until the patent
application is filed.”
The basis for this rule is known as
Section 102 of the Patent Act. The rule
precludes an inventor from obtaining a
patent if the invention was on sale or
offered for sale in the United States
more than one year before a patent
application is filed. The justification for
’102 is the premise that prompt and
widespread disclosure is basic to the
concept of granting a monopoly. The
time provided the inventor is deemed to
be adequate and reasonable for determining
whether seeking a patent is
worthwhile.
The problem arises in defining the
specifics of the “on-sale bar.” Is one
offer of sale sufficient? Does the sale of
an experimental sample start the clock?
Does showing a sample and discussing
eventual production constitute an offering?
In a decision by the U.S. Supreme
Court, more concrete guidelines have
been provided for precisely determining
when the one-year clock is started. This
decision [Pfaff v. Wells Electronics,
Inc.; 119 S. Ct 304 (1998)] outlined a
new test for determining when an application
must be filed if the concept is to
be patented.
The previous ruling was that a concept
must be “substantially complete”
at the moment that the one-year period
begins. Again, this standard can be subject
to a great deal of uncertainty. As a
result, the Court ruled that (1) the invention
must be complete, as indicated by
the fact that the invention if ready for
patenting; (2) the invention must be the
subject of a commercial offer for sale.
Establishing that the invention is ready
for patenting depends on one of two
potential tests:
• Reduction to practice, as indicated
by a physical embodiment of the invention,
• Showing that more than one year
before filing a patent application the
inventor had prepared drawings and
other description of the invention that
were sufficiently specific to enable a
person skilled in the art to practice the
invention.
The Court also stated that an inventor
is entitled to perfect the invention
through experimentation without loss of
the right to obtain a patent. If an activity
was actually experimental rather than
commercial, a patent can be sought.
As usual, carefully documented and
timely records that establish the progression
of the experimental stage are
very important to obtaining the protection
of the ruling. The U.S. Patent and
Trademark Office requires disclosure of
any information that may be deemed
material to the patentability of the
invention. If this is not fully carried out,
a patent may be unenforceable on the
grounds that all relevant material information
was not disclosed to the PTO.
This is a case where you must testify
against yourself if there was anything
that can be construed as a commercial
offering.
Consequently, to build a strong patent
estate a company and the inventor must
pay close attention to the following
guidelines:
• File the application as early as pos-
YOUTHFUL INVENTORS
How old does a person have to be to become an inventor? One group convinced
that innovative talents exist even within young children is the U.S.
Patent Model Foundation, a non-profit organization based in Alexandria, VA.
This group of educators, inventors, parents and others feel that with a little
encouragement school-age children can do a remarkable job of meeting needs
with new inventions.
The organization conducts a broad spectrum of activities, ranging from supplying
school teachers and parents with ideas and materials to foster innovation
amongst children to sponsoring an annual contest for youthful inventors. The
contest is conducted according to the age of the participants. Selection of the
winners is made by a panel of high-ranking executives of major companies, as
well as scientists and educators. Last year’s panel included a Nobel Prize
Laureate.
Recent inventions that won monetary awards for the youthful participants
included a mobile rabbit house, a snorer’s solution, pick-up truck rails, a paw
cleaner, and self-extinguishing safety candles. A fifth-grader won a prize for a
circular device that fits at the bottom of a beverage cooler, so that elusive last
drop in the container can be obtained.
This effort was initiated in the 1980’s to rekindle the American inventive spirit.
Take a look at their website (www.inventamerica.org). Also, the USPTO now
has a special page for youthful inventors that provides some help and insight to
their interests (www.uspto.gov/go/kids/). Further, a website devoted to debunking
commercial groups that profess to aid would-be inventors at a rather extravagant
fee also has a section devoted to kid inventors (www.inventored.org).