Loss of Foreign Patent Rights



Disclosure may jeopardize foreign patentability  
by Raymond A. Nuzzo
 

        Most foreign countries require that a patent application be filed prior to
any public disclosure of the invention. This requirement is referred to as
“absolute novelty.” Most foreign countries define a “public disclosure” as a
publication, oral presentation, public display or public use. It would not be
possible to obtain a valid patent in an “absolute novelty” country if the
invention is publicly disclosed prior to filing a patent application in that
particular country. Absolute novelty countries include Canada, France,
Germany, Japan and the United Kingdom.

        The United States and most countries, including those mentioned above, are
signatories to the Paris Convention. These countries are referred to as
“convention countries.” The treaty provides that when a first patent
application is filed in the patent office of a “convention” country, a
corresponding patent application (for the same invention) filed in another
“convention” country within one year of the filing date of the first
application will be accorded the filing date of the first application. The
date of the first application is referred to as the “priority date.”

Therefore, the effective filing date of the second application is the filing
date of the first application. If the second application is not filed within
one year, the second application’s filing date will be its actual filing date.
The following examples illustrate the connection between “absolute novelty”
and the Paris Convention.

Example I
John Cody files a first patent application in the USPTO on January 2, 1996 and
a second corresponding application is in Canada on September 7, 1996. The
Canadian application is entitled to the filing data of the U.S. application.
If Cody publicly discloses the invention after the filing date of the U.S.
application, the public disclosure would not vitiate the “absolute novelty”
requirement of Canadian patent law because: (1) the Canadian patent
application was filed within one year of the filing date of the U.S.
application and is entitled to the U.S. filing date, and (2) the public
disclosure was made after the U.S. filing date.

Example J
Joyce Martin publicly discloses the invention at a trade show on February 1,
1996. Martin files a U.S. patent application on March 1, 1996 and a Canadian
patent application on June 1, 1996. The effective filing date of the Canadian
application is the U.S. filing date. However, public disclosure of the
invention was prior to the effective date of the Canadian application and
therefore destroys the absolute novelty required for a Canadian patent. Martin
cannot obtain a valid Canadian patent. However, the public disclosure in this
instance will not preclude her from obtaining a valid U.S. patent. If the
public disclosure included a publication such as a written description or
press release, then Martin must file the U.S. application within one year of
the trade show, i.e. February 1, 1997, or else she will be barred from
receiving a valid patent under 35 USC § 102(b).

Example K
Paul Carver files a U.S. patent application on his invention on March 1, 1996.
He publicly discloses the invention via a press release on June 1, 1996 and
then files a corresponding German patent application on April 1, 1997. The
German application is filed in excess of one year after the U.S. filing date
and is therefore not entitled to the same filing date as the U.S. application.
The effective filing date of the German application is its actual filing date
in the German patent office. Furthermore, the public disclosure of the
invention prior to the effective filing date of the German application
destroys the absolute novelty required under German patent law. Carver will
not be able to obtain a valid German patent on the invention. However, in this
instance, the public disclosure would not preclude Carver from obtaining a
valid U.S. patent.

        Activities that constitute placing the invention “on sale” under U.S. law do
not necessarily constitute a “public disclosure” that could prevent obtaining
a patent in an absolute novelty country. An offer to sell the invention made
in the course of an on-going confidential relationship does not constitute a
public disclosure and would not destroy the absolute novelty required in most
foreign countries. However, the offer to sell the invention, regardless of
whether it was made in the course of a confidential relationship, will trigger
the start of the one year period under 35 USC §102(b) in which to file a
patent application in the USPTO.
 

Attorney Raymond A. Nuzzo practices patent, trademark and copyright law.  He
may be reached at RayAnNuzzo@aol.com    or    raymond.nuzzo@snet.net



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Posted 5/27/98. Page last updated 5/27/98