Exporting Technology Information to Colleagues Abroad Requires License

Posted on May 10, 2008 by Brian Wm. Higgins

     Employees of Maryland companies with R&D, manufacturing, and other  capabilities located outside the US may be tempted to collaborate with their counterparts located abroad. It's important to remember, however, that exporting technology information outside the US is highly regulated by several US agencies.

     If the exportation of technology information to overseas colleagues (or to anyone else) is for the sole purpose of filing a patent application outside the US, a license to export that information must first be obtained from the U.S. Patent & Trademark Office (PTO). 35 U.S.C. § 184 provides the legal basis for that requirement:

"Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 of this title [Patent Secrecy Act] without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and without deceptive intent and the application does not disclose an invention within the scope of section 181 [i.e, secrecy] of this title."

     The term "application" includes patent applications and any modifications, amendments, or supplements thereto, or divisions thereof.

     For information concerning the consequences of failing to comply with the requirements set forth above, continue reading...


     According to § 184, the scope of a foreign filing license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under § 181 of this title [Patent Secrecy Act] and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such § 181.

     In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the US application was not required to be made available for inspection under § 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such § 181.

     Under 35 U.S.C. § 185,

"Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184 of this title, have made, or consented to or assisted another's making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section 181 of this title.

     Under 35 U.S.C. § 186,

"Whoever, during the period or periods of time an invention has been ordered to be kept secret and the grant of a patent thereon withheld pursuant to section 181 of this title, shall, with knowledge of such order and without due authorization, willfully publish or disclose or authorize or cause to be published or disclosed the invention, or material information with respect thereto, or whoever willfully, in violation of the provisions of section 184 of this title, shall file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design, or model in respect of any invention made in the United States, shall, upon conviction, be fined not more than $10,000 or imprisoned for not more than two years, or both.



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District Court IP Litigation Trends 1Q 2008

Posted on April 10, 2008 by Brian Wm. Higgins

    The table below identifies the top 10 states having the most copyright, trademark, and patent lawsuits filed in their respective U.S. district courts during the first quarter of 2008 (source Justia.com). The numbers show that California had the most filings, followed by, in order, Texas, New York, Illinois, Florida, Pennsylvania, North Carolina, New Jersey, Ohio, and Michigan.  The table shows Maryland's ranking: 24th overall, but 15th for trademark and copyright filings. 



 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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Patent Reform Act of 2007 - Update (Part 5)

Posted on August 23, 2007 by Brian Wm. Higgins

     In an earlier post, the proposed new 35 U.S.C. § 103(a), set forth in the Patent Reform Act of 2007, was summarized.  To illustrate how an obviousness analysis might be approached under the new § 103(a), assume I “invent or discover” a new invention on Day 1 in the U.S., reduce the invention to practice on Day 60, file a provisional patent application in the PTO on Day 80 (without any claims), and file a nonprovisional application on Day 250 (claiming the invention).  Under this scenario, Day 80 could be my “effective filing date” even though the provisional application did not include any claims:

“The ‘effective filing date of a claimed invention' is--(1) the filing date of the patent or the application for patent containing the claim to the invention; or `(2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112.”   See proposed new § 100(h).

     However, if the invention is not adequately disclosed in the provisional application, my “effective filing date” could be Day 250. 

     It would appear, then, that, subject to the exceptions under proposed new section § 102(b) (see related post), any prior art available between Day 1 and Day 80 (or Day 250, as the case may be) could be used in an obviousness analysis by the PTO to reject my claims.  In other words, under the new first-to-file system, I would not be able to swear behind prior art using evidence of an earlier conception and reduction to practice.  Eligible prior art available between Day 1 and Day 80 (or Day 250) could include patents, printed publications, public uses, and sales of inventions. See new § 102(a).

 

Comments:



  • Clearly the proposed new § 103(a) statutory framework encourages me to rush to the Patent Office to file a patent application as soon as possible after my invention/discovery on Day 1.

  • It wouldn't be too much of a stretch to say that many organizational patent departments operate in a somewhat leisurely manner (or carefully and calculating, depending on your perspective) when it comes to processing invention disclosures.  That's understandable, given that under the first-to-invent system currently in place in the U.S., there is no real urgency when it comes to submitting a patent application to the PTO (absent the need to protect the invention for foreign filing purposes, or if there is a current infringer in the market knocking off your invention).  Invention disclosures will obviously need to be handled in a more expeditious manner under the first-to-file system.

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Patent Reform Act of 2007 - Update (Part 4)

Posted on August 20, 2007 by Brian Wm. Higgins

          The doctrine of obviousness has been called the “cornerstone of American patent law.” That could explain why the Supreme Court’s KSR v. Teleflex decision, which arguably tightened the doctrine in a way that could make it increasingly harder for inventors to obtain patents in the U.S., has resonated so loudly over the last several weeks. On the heels of KSR, however, is another possible shake up of the doctrine, this time emanating from the Legislative Branch in the name of Patent Reform. While it may be too early to ascertain whether the Patent Reform Act of 2007 will make the prospects of obtaining patents in the U.S. more uncertain, it is clear that it will affect the way inventions are analyzed under the doctrine of obviousness.

          Traditionally, the question of whether an invention was obvious under 35 U.S.C. § 103(a) involved considering the four “Graham factors”: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. Graham v. John Deere, 383 U.S. 1 (1966). However, under the proposed new § 103(a), as shown in the table below (juxtaposed with the current version of the law and showing proposed changes), the Graham factors may need to be applied in a different manner in the future.

 



          A key difference between the existing and proposed § 103(a) is the respective time periods defining eligible prior art. Traditionally, prior art been defined as what was available to those of ordinary skill in the art on or before the date the invention was made, which means the date of “discovery” (see the existing definition of “invention” in § 100(a), which is “invention or discovery”). Under the new law, however, prior art could be defined somewhat broader as what was available to those of ordinary skill before the effective filing date of the claimed invention (see the proposed definition of “claimed invention” in new § 100(i), which could be defined as “the subject matter defined by a claim in a patent or an application for a patent”). Those two dates—the invention/discovery date and the application filing date—could be months, or even years, apart. And during that intervening time period, a considerable amount of new prior art could be developed and used against a patent applicant. 

          Check back for a subsequent post that will summarize how the new § 103(a) could affect the approach to analyzing the nonobviousness of a new invention using the Graham factors.

Comments:

  • The versions of the Patent Reform Act of 2007 introduced in the Senate and House are S.1145 and H.R.1908, respectively
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