Anticipate This!™ | Patent and Trademark Law Blog

Showing “First to Invent”.

Posted in Practice Commentary by Mike Dockins on December 5, 2008

While all of us that practice patent law realize that the U.S. is a first-to-invent country, rather than a first-to-file country, an interesting aspect of the law can arise when considering the question of whether a client was first-to-invent.  In particular, what if a client invents something in a foreign country?  How do these circumstances affect “first to invent” status?  Does the inventing have to occur on U.S. soil?  Similarly, what if a foreign applicant invents in a non-U.S. country?  How does this affect their “first to invent” status?

Prior to the enactment of NAFTA and the Uruguay Round Agreements Act, applicants were permitted to show they were the first to invent only by offering evidence of activities conducted in the U.S. or by filing a foreign priority application.  Such evidence of first to invent includes evidence of conception, diligence, and reduction to practice.

With the enactment of NAFTA and, later, the Uruguay Round Agreements Act, the law under 35 USC 104  changed.  It is easiest to describe Section 104 in terms of authorized countries (U.S., NAFTA, and WTO countries) and unauthorized countries (everywhere else).

Pursuant to Section 104, any inventing performed, and evidence thereof, in an authorized country by a U.S. applicant (note: citizenship is not required) may be used to show that the applicant was first to invent.

Invention that has occurred in unauthorized countries is entitled only to the earliest date on which the invention was disclosed to another in an authorized country. Providing an invention disclosure with an enabling disclosure or a marked up draft of an application to someone in an authorized country is sufficient to meet this standard. Diligent reduction to practice or mere knowledge of the invention in an unauthorized country will not be considered for determining priority of invention.  Thus, activities in unauthorized countries cannot be used to show conception or diligence when attempting to antedate a prior art reference under 37 CFR 1.131.

It is worth noting that Section 104(a)(3) addresses potential issues arising from differences in discovery practices between the U.S. and foreign countries.  U.S. discovery rules and laws are quite extensive compared to many foreign countries.  If, either by choice or by accident, an applicant does not supply information equivalent to what would be forthcoming under U.S. discovery, then the applicant may face the potential that the courts of the U.S. and the USPTO may give very little weight to the applicant’s evidence of invention abroad.

Scheduled CAFC Oral Arguments in USPTO v. GSK & Tafas – December 5, 2008.

Posted in General Commentary by Jake Ward on December 4, 2008

The CAFC hears oral arguments tomorrow, December 5th, in relation to the ruling in Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas, which permanently enjoined the USPTO’s claims and continuations rules.  In permanently enjoining the claims and continuations rules, Judge Cacheris held that the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and that the claims and continuations rules are substantive in nature.

Gene Quinn at IPWatchdog has nicely summarized the chronology of events leading to the present appeal here.  Further background on this case from AT! may be found here.

They Invented What? (No. 121)

Posted in They Invented What? by Jake Ward on December 3, 2008

U.S. Pat. No. 7,113,911: Voice Communication Concerning a Local Entity.


What is claimed is:

1. A system for enabling verbal communication on behalf of a local entity with a nearby user, the system comprising:
         user equipment, intended to be carried by a user, comprising a wireless communication subsystem, and a contact-data input subsystem for receiving contact data;
          a contact-data providing arrangement located at the local entity for making available to a user near the local entity or to the user equipment carried by that user, contact data identifying a voice service associated with the entity but separately hosted;
          a communications infrastructure comprising at least a wireless network for communicating with the wireless communication subsystem of the user equipment;
          an audio output arrangement forming part of the user equipment, or located in the locality of the local entity and connected to the communication infrastructure;
          an audio input arrangement forming part of the user’s equipment, or located in the locality of said entity and connected to said communications infrastructure;
         a voice service arrangement for providing said voice service, the voice service arrangement being connected to said communications infrastructure such as to enable the user’s equipment to contact it over the wireless network using said contact data, the voice service arrangement being operative, in response to being contacted by the user equipment, to act as voice proxy for the local entity by signals exchanged over the communications infrastructure with the audio input and output arrangements thereby enabling a user to interact with the voice service through spoken dialog with voice input by the user through the audio input arrangement and voice output to the user through the audio output arrangement;
         controllable functionality associated with the local entity; and
         a short-range-communications arrangement comprising complimentary elements at the local entity and in the user equipment for establishing a short range wireless link between the user equipment and said controllable functionality; the user equipment being arranged to receive control data from the voice service arrangement in the course of the latter acting as a voice proxy for the local entity, and to pass on the control data via said short-range wireless link to said controllable functionality whereby to enable this functionality to be controlled by the voice service arrangement in coordination with said voice output.