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 The Inventor's Mentor

April 2011

First to File Part Two - Loose Lips Sink Ship

 
In theory, Clause 102(a)(1) of the new law protects the inventor by allowing him to lock in his rights for one year by publishing his invention.

A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

In practice, however, publication before filing works against the little inventor. Consider the following scenario.

Loose Lips Sink Ship. An inventor publishes his invention to lock in his rights as stated in the new law.  The manager at a competing company reads the publication and is horrified by its disrupting potential. The invention could potentially put him out of business. The only way out is for his engineers to come up with the same solution or better, and publish it before the original inventor files to prevent him from getting a patent. The manager knows that his hands are tied and that he can’t describe the new invention to his engineers because that would lead to a derivation that would not stand in litigation court. The engineers must come up with the solution completely independently.

He calls his chief engineer and says to him: “Look here Mr. Engineer. There is this technical problem that we need to solve.”

 If the engineer comes up with the invention, the solution can be published with the engineer’s name as the inventor and therefore lock out the original inventor. No one can get a patent because each inventor’s publication is prior art to the other inventor. Thus the company is free to practice the invention without having to pay royalties to the original inventor.

If the engineer does not readily come up with the solution the manager can use a more forceful method to draw his attention. “Hey Mr. Engineer, can you enumerate all the possible methods that you can think of, to solve this problem?”

“Oh yes,” the engineer would say. “There are methods A, B, C and D but it would take $10,000,000 to test them.”

The manager would then say, “Well we know that A does not work for technical reasons. We also know that the president of the company does not like B and C, so asking for money to research them won’t get you anywhere. And the last one, method D obviously violates the law of conservation of energy.”

Violating conservation of energy? The engineer is appalled. He studies method D in detail and then gets back to the manager within one hour:

“Mr. Manager, you’re a good manager but please leave the engineering to me. Method D does not violate any conservation law. In fact, method D is not only the perfect solution to your problem but we can improve on it.”

“Wonderful, Mr. Engineer! You have saved our company! Your invention will get published with your name on it and you’ll get a $10 bonus.”

The manager led his engineer to the correct solution without telling him the answer. The end result is that everyone is locked out of getting a patent for the original invention and the company is free to practice the invention without paying royalties. Even worse, the original inventor may have to pay royalties to the company for using the improvements generated by the engineer.

The above scenario is perfectly legal and is already used by companies to get around non-disclosure agreements when these agreements include clauses excluding inventions that are independently invented by the disclosee.

Illegal Derivation. What if the manager and engineer ignore the fine points of law and simply publish the invention naming themselves as inventors without acknowledging the original inventor? Litigation is then the only option left to the inventor to prove theft. Unfortunately this process is likely to be very expensive and futile.   

Secrecy, Surveillance and Spying. The new law leaves no recourse to inventors but absolute secrecy, and conversely the only legal recourse for non-inventors is intensive surveillance of the competition and countering any threatening publication with “legally derived” inventions as explained above. In addition, the new law will motivate competitors to use illegal means – industrial spying - for obtaining information.

What is the Little Guy to Do? Large companies typically allocate internal funding to new products and have engineering departments, manufacturing departments and marketing departments.  They can maintain secrecy during the whole development cycle of a product.

However, the small entrepreneur is not so endowed. He needs to talk openly to outside people such as investors, manufacturers, and marketers.  How can he do so in perfect secrecy? The sad truth is that he can’t. Thus new law is a detriment to American innovative competitiveness and a job killer.      

 

For archived newsletter and a lot of information for the small inventor go to: www.patentsandventures.com.  

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.    

This newsletter should not be construed as being legal advice.         ©2011 by George Levy

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